Irides: Weekly patent litigation update

The Irides Weekly Update is our round-up of patent litigation news highlights from around the world. Taking its name from the plural of “iris” - a nod to the ability of Irides to see what’s happening around the world.

Our latest edition - 18 August 2023 - is below:

INDIA

Timelines under Rule 138 of Patent Rules are to be interpreted strictly and are not contrary to Rule 49.6 of the PCT Regulations

On 10 August 2023, the Delhi High Court refused to interpret a national provision so as to allow for condonation of the delay to submit a national phase patent application. Decision here.

By way of background, the patent applicant filed a US patent application followed by an international application under the Patent Cooperation Treaty (“PCT”), claiming priority from the US application.The applicant instructed its Indian patent attorney to file a National Phase Application for registration of its patent application for a System and Method for Treating Blood, corresponding to the PCT application. The US patent attorney expressly confirmed to the Indian patent attorney that the application should be filed within 31 months of filing of the claimed priority application (being the period that applies in India).  The applicant subsequently became aware that the Indian patent attorney had not filed the application within the stipulated period, missing the deadline, and thereafter instructed a further patent attorney in India to pursue the application out of time. The application was returned by the Indian Patent Office (“IPO”) for being out of time.  The application was resubmitted on the basis that it was maintainable in light of Rule 49.6 of the PCT Regulations. Rule 49.6 specifically provides for the reinstatement of rights of the applicant with respect to an international application, and has the effect of obliging all designated and elected Offices to excuse the delay in meeting the time limit under art. 22 or 39(1) PCT for entry into the national phase if the Office finds that the delay occurred in spite of due care required by the circumstances having been taken or, at the option of the designated or elected Office, was unintentional, unless the PCT country in question has notified the International Bureau that this Rule is incompatible with their national law.

The IPO, however, did not accept this submission and again returned the application on the ground that it breached the statutory deadlines set out in the amended Rule 138 of the Patent Rules 2003 (“PR 2003”).The patent applicant appealed to the High Court against the decision of the Controller of Patents arguing that it was entitled to additional time for filing the National Phase Application and that the amendment to r. 138 PR 2003, which removes any effective power from the Controller to condone delay, is ultra vires s. 159 of the Patents Act 1970 for being inconsistent with the PCT Regulations. Art. 22 of the PCT mandates that applicants provide a copy of the International Application, its translation, and pay the national fee to designated offices within 30 months from the claimed priority date. However, art. 22(3) allows national laws to prescribe longer time limits for these actions, as r. 138 PR 2003 has done by extending the time from 30 months to 31 months. On the other hand, the applicant submitted that r. 138 PR 2003, which does not allow for the condonation of delays in filing the National Phase Application, was contrary to the requirements of rule 49.6 of the PCT Regulations.

The Court disagreed and upheld the IPO's decision, stating that r. 49.6(f) indeed permits designated offices to disregard certain provisions of the Regulations if they conflict with national law. In this context, the IPO had communicated its reservations in respect of r. 49.6 as required by the Rule. The court concluded that the applicant's case lacked merit and dismissed the application.

ITALY

Amendments to the Italian IP Code enter into force

On 8 August 2023, an amendment to the Italian Intellectual Property Code was published that will enter into force on 23 August 2023. Key amendments are:

• the modification of art. 59 IP Code allows a national Italian patent to remain in effect even if a European/Unitary patent is granted for the same invention by the same inventor with the same filing or priority date. Previously, the Italian patent would cease to have an effect in such a scenario. Following the modification, the Italian patent will coexist alongside the European/Unitary patent and continue to be effective even if the European/Unitary patent is later revoked;
• Art. 65 IP Code has been altered, changing the "Professor's Privilege" rule. Presently, for academic or public institutions with research interests, employed researchers own patentable invention rights. Under the new rule, the employing entity will own these rights, with the inventor retaining recognition as the inventor. The inventor must inform the employer of the object of their invention, with the latter having six months (extendable by three months) to apply for a patent in its name. If not, the inventor can file for a patent application in their own name; and
• It will be possible in civil cases to apply for seizure of potentially infringing products that are exhibited at or in transit to exhibitions.Currently the ability to order seizure is limited to criminal cases only.

UK

Heraeus’ patent for a method for glass tube sealing held infringed on a purposive construction in the High Court

On 31 July 2023, Mr Justice Zacaroli, handed down his decision finding infringement of EP(UK) 1 598 845 (‘EP 845’) to a method for sealing the ends of quartz glass tubes used in the manufacture of arc lamps, in infringement proceedings brought by Heraeus. First Light Lamps’ counterclaim for invalidity for lack of inventive step was rejected. The decision can be accessed here.

Claim 1 of EP 845 describes a method of sealing a quartz glass tube to a tungsten rod of an arc lamp. The seal is required so as to keep the inert gas within the glass tube. The essential feature of the invention was that the sealing method was direct, as opposed to the commonly used method in the art, which was indirect. As part of the sealing process, a bead of sealing glass is used to fuse the quartz glass tube to the tungsten rod.

Heraeus’ primary case was infringement on a purposive construction. Key to the dispute was that claim 1 of EP 845 stated that the bead of sealing glass on the tungsten rod was required to be “not bigger” than the external diameter of the end of the quartz glass tube. The alleged infringing process specified that the bead of sealing glass had a width of 3.7-4.1 mm and a diameter of 0.1-0.3 mm greater than the external diameter of the quartz glass tube. The purposive construction case turned on whether a diameter of the bead that was 0.1-0.3 mm larger than the external diameter of the quartz glass tube was considered to be “not bigger” as specified in the claim. Heraeus’ case was that “not bigger” was a fuzzy boundary, that it should be construed as “not materially bigger”, and that 0.1-0.3 mm would fall within this fuzzy boundary due to usual manufacturing tolerances that would form part of the skilled person’s common general knowledge. First Light Lamps’ case was that the “not bigger” requirement should be interpreted strictly. Following expert testimony, the question for the judge was whether “not bigger” could be read as imposing a stricter tolerance than that which the skilled person understood in light of their common general knowledge.

Finding for Heraeus, Mr Justice Zacaroli held that “not bigger” did not impose stricter tolerances than were common general knowledge, and therefore the claim was not limited to methods in which the bead of sealing glass was precisely no bigger than the external diameter of the quartz glass tube. It would include those methods where the bead was not materially bigger which had no material effect upon the way in which the invention worked. On this basis, First Light Lamps’ process infringed.

Although only considered briefly in light of the purposive construction finding, Mr Justice Zacaroli also held that that there was infringement by equivalents for essentially the same reasons.

Heraeus also had a claim for literal infringement, pursued on the basis that First Light Lamps on occasion inadvertently used glass beads no bigger than the outside diameter of the quartz glass tube. Although there was strictly no need to rule on this argument in light of his finding on purposive construction, Mr Justice Zacaroli expressed his conclusions in case of any appeal on the question of purposive construction. The patentee faced two difficulties in proving infringement. The first was that the glass bead ceased to exist on completion of manufacture, and therefore it was difficult to measure the bead used in manufacture based on the final product. The second was in proving this use occurred on a more than de minimis number of occasions. The judge was not satisfied on the evidence available that the single sample presented was an instance of literal infringement nor (even if it was) that this had occurred on a more than de minimis basis.  The claim for literal infringement was therefore dismissed.

UPC

UPC names the 21 new technically qualified judges

On 9 August 2023, the UPC published a list of 21 recently appointed technically qualified judges together with their technical fields. The list can be found here.