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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 - 06 October 2023 - is below:


UK Court finds patent invalid for obviousness, supports availability of Gillette and Formstein defence

On 25 September 2023, Mrs Justice Bacon handed down her decision in Sycurio v PCI-Pal [2023] EWHC 2361 (Pat), finding the subject patent invalid for obviousness and not infringed. The Judge also noted that she would have accepted PCI-Pal’s reliance on a Gillette/Formstein defence. Decision here.

Sycurio sued PCI-Pal for infringement of GB 2473376 (the Patent) which related to methods of processing calls in a call centre. PCI-Pal counterclaimed that the patent was invalid and sought various declarations of non-infringement in relation to certain enhancements to the system covered by the Patent.

PCI-Pal relied on three pieces of prior art in challenging the validity of the Patent. The Judge found the Patent invalid for obviousness over two of the cited prior art documents.

At the time of writing, the sections of the judgment which address infringement on normal construction and under the doctrine of equivalents remain redacted, as do those considering in detail the applicability of a Gillette/Formstein defence.  However, the Judge referred to the comments of Birss LJ in Facebook Ireland v Voxer regarding the Gillette and Formstein defences. The Gillette defence relies on asserting that the allegedly infringing product or method is itself an obvious variant of the prior art at the priority date. If true, then a claim whose scope would include the alleged infringement would be invalid. The Formstein defence applies the same principle in the context of infringement under the doctrine of equivalents. In Facebook, Birss J endorsed the Formstein approach but it was not necessary for him to apply the principle. More recently, a Formstein defence was regarded as available and determinative at first instance (and not challenged on appeal) in Vernacare v Moulded Fibre Products, as reported on previously here and here.

PCI-Pal relied on an additional piece of prior art which had not been part of their case on invalidity in support of the Gillette/Formstein defence. The Judge noted that since the Patent was found invalid, it was not necessary to rule on the principle. Nevertheless, she noted obiter that she would have accepted such a defence based on obviousness of the alleged infringing method over this prior art.


Slovak IPO to introduce an alternative to Provisional Patent Applications

On 1 September 2023, the Slovak Intellectual Property Office (“IPO”) introduced an official alternative to provisional patent applications, which were previously unavailable in Slovakia. Instead of provisional patents, applicants can now establish priority for their inventions by filing applications that include basic information such as their intent to file a patent, contact details, and a description. This new practice allows a 12-month period for applicants to submit a complete patent application, making it more advantageous than traditional provisional patents. Furthermore, this period is extendable, and applicants have the option to request further processing and restitutio in integrum if their application is rejected.


TIPO incorrectly approved the post-grant amendment of the asserted patent.

On 4 August 2023, the Intellectual Property and Commercial Court (IPC Court) ruled that the plaintiff's patent was invalid because a post-grant amendment approved by the Taiwan Intellectual Property Office (“TIPO”) significantly altered the previously allowed and published claims (No. 2023 Civil Patent Suit 4, August 2023).

In this action, after the TIPO granted the patent, the patentee obtained a post-grant amendment to modify the scope of the claims.  The patentee then brought an infringement action based on the amended claims. The defendant challenged the patent's validity on the basis of obviousness as well as submitting that TIPO should not have approved the post-grant amendment due to the substantial changes it made to the granted claims.

Under art. 67 of the Patent Act, patentees can request post-grant amendments but with specific limitations, such as deleting claims, narrowing their scope, correcting errors, or clarifying statements. These amendments must not go beyond the original content disclosed in the application and should not substantially alter the published claims. Art 71(1) allows any person to file an invalidation action against an invention patent, including challenging whether a post-grant amendment approved by TIPO meets the requirements for amendment as outlined in art. 67. Under the Act, if TIPO determined that a previously approved post-grant amendment fails to meet these requirements (referred to as "erroneous approval for post-grant amendment"), it would invalidate the patent. If an invalidation action is successful, not only is the post-amendment approved by TIPO withdrawn, but the entire patent is revoked, including the pre-amendment patent.

Under settled case law, if TIPO approves a patentee's post-grant amendment, it is challenging for a party seeking to revoke a patent to dispute whether the amendment meets the "requirements for amendment" and convince the TIPO to change its stance during the revocation proceedings and in most instances, the IPC Court upholds the TIPO's decisions in such cases. However,  in this case, in its judgment, the IPC Court reversed TIPO's initial approval of the post-grant amendment, citing its substantial alteration of the published claims, and subsequently invalidated the patent, under art. 67 of the Patent Act.


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