The Market Court: Utility Model for Laser Treatment Lacked Novelty

A utility model is similar to a patent. However, there are some differences. One key difference is that many registration authorities, like the Finnish Patent and Registration Office (PRH), do not automatically examine the requirements of novelty and inventiveness. The examination of those requirements is necessary only if an invalidity claim is raised in relation to those requirements.

The examination of novelty became the decisive factor in the Market Court decision 336/16 of 7 June 2016.

Background

In February 2012, the Board of Trustees of the Leland Stanford Junior University (LSJU) filed a utility model application for an invention 'Patterned laser treatment of the retina'. The invention consisted of independent claim 1 and dependent claims 2-20. The application was converted from a European Patent Application, filed on 2 December 2004. 

PRH registered the utility model (no. 9630) on 19 April 2012. 

Drawing of the invention.
Application no. U20124034.

Valon Lasers Oy (VL) lodged an invalidation claim based on section 19 of the Act of Utility Model Rights (800/1991). The section 19 provides that a utility model registration shall be declared wholly or partially invalid in response to a request to that effect, if, inter alia, the registration relates to an invention that is not new and/or lacks the required inventiveness. VL cited the following prior art documents:

- D1: US 2003179344 A, 25 September 2003

- D2: JP 2001149403 A2, 05 June 2001

PRH accepted the invalidation claim and revoked the utility model on 31 July 2014. According to PRH, all the features in the claim 1 are found in both prior art documents (D1 and D2) although the solutions in the documents are slightly different in practice.

The Market Court

LSJU appealed to the Market Court and requested that the decision of PRH will be reversed. Furthermore, LSJU requested that the Market Court upholds the registration of the utility model no. 9630 in accordance with claims the appellant has provided to the Market Court on 8 December 2014 (independent claim 1 and dependent claims 2-18).

Here is a translation of the independent claim 1, amended on 8 December 2014 (FinnIPR translation with the help of EP20040812972): 

1. A system for laser treatment of the retina of an eye of a patient, the system comprising: 

an alignment source (411) producing an alignment beam that provides a visible alignment pattern comprising a plurality of separated spots projected onto said retina; and 

a laser source (413) producing, responding to an operator action, a laser beam for providing doses of laser energy to at least two treatment locations on said retina where the said spots are,

characterised in that the said treatment locations are spaced apart, and that the system comprises a scanner for moving the laser beam from one of said treatment locations to another of said treatment locations, and wherein said scanner moves the alignment beam from one of said separated spots to another of said separated spots, and for providing all of said doses of laser energy to said treatment locations substantially sequentially, and in less than about 1 second.

VL, on the other hand, argued that:

1) the appellant should have provided the amended claims already in the proceedings at PRH. Therefore, the amended claims should be dismissed. 

2) the invention is, according to the independent claim 1, merely a process and therefore not registrable. 

3) the amended independent claim 1 and the description include matter that is not disclosed in the original application. 

4) the independent claim 1 of the invention is not presented precisely enough and that the description of the invention is not sufficiently clear to enable a person skilled in the art to carry out the invention. 

5) the invention is not new and/or it lacks the required inventiveness.

The Market Court issued its decision 336/16 on 7 June 2016. 

1) Was LSJU able to amend the claims in the proceedings at the Market Court?

The Market Court started its analysis by stating that one has to seek answer from the Administrative Judicial Procedure Act (586/1996) since neither the Market Court Proceedings Act (100/2013), Act on Utility Model Rights nor the Act on the Finnish Patent and Registration Office (578/2013) have rules that restrict the appellant from presenting new grounds during the appeal proceedings.

Section 27 paragraph 2 of the Administrative Judicial Procedure Act provides that, after the end of the appeal period, the appellant may present new grounds in support of his appeal, unless the matter as a result changes in nature. The court ruled that this applicable rule does not prevent the appellant from providing new amended claims during the appeal to the Market Court.

2. Is the invention merely a process?

According to section 1 paragraph 4 sub-paragraph 3 of the Act on Utility Model Rights, utility model rights shall not be granted for processes.

VL had argued that the invention is merely a process because of the following statement in the independent claim 1:

"providing all of said doses of laser energy to said treatment locations -- in less than about 1 second".

The court ruled that the feature mentioned above is a so-called functional feature. The court continued by stating that it is possible to use functional features in product or apparatus claims. The court concluded that the independent claim 1 is clearly an apparatus claim, not a process claim.

3. Does the amended independent claim 1 and the description include matter that is not disclosed in the original application?

According to section 11 of the Act on Utility Model Rights, a utility model application may not be amended in such a way that a utility model right is claimed for matter not disclosed in the original application.

VL argued that the statement in the independent claim 1, which mentions that the treatment locations are apart, is not disclosed in the original application. 

The court disagreed and stated that the original description includes drawings that demonstrate how the treatment locations are apart.

4. Is the independent claim 1 of the invention presented precisely enough and is the description of the invention sufficiently clear to enable a person skilled in the art to carry out the invention?

According to section 6 paragraph 2 of the Act on Utility Model Rights, the application shall contain a description of the invention, accompanied by drawings where necessary, and a precise statement of the subject matter for which utility model right protection is sought (a claim). Furthermore, the description shall be sufficiently clear to enable a person skilled in the art to carry out the invention with the guidance thereof.

VL argued that according to the description, the treatment locations could be bigger than the alignment spots and therefore, according to VL, the treatment locations could be partially overlapping each other if their corresponding spots are close to each other and if the treatment locations are bigger in relation to the said spots. This would contradict the independent claim 1, which mentions that the treatment locations are apart.

The court stated that the description of the invention does not mention that the treatment locations could be partially overlapping. The statement in the independent claim, which mentions that the treatment locations are apart, is therefore consistent with the description and it is presented precisely enough.

5. Is the invention new and does it have the required inventiveness?

According to section 2 paragraph 1 of the Act on Utility Model Rights, an invention must be new in relation to what was known before the filing date of the utility model right application and must differ essentially therefrom.

VL argued that the independent claim 1 is not new in light of the prior art documents D1 and D2.

The court stated that the D1 does not include a feature where an alignment beam provides a visible alignment pattern comprised of several separate spots. The invention, as presented in the independent claim 1, is therefore new in light of prior art document D1.

The court then analysed the prior art document D2. According to the court, there are some differences between the treatment presented in the independent claim 1 and the treatment presented in D2. The court ruled, however, that the functional features, mainly the separate treatments spots, are not able to add to the independent claim 1 any technical features, which would differentiate the independent claim 1 from the prior art D2.

The court ruled that the invention is not new in relation to what was known before the filing date of the utility model right application and it does not differ essentially therefrom.

Therefore, the invention is not registrable.

The appeal was dismissed.

The Market Court: Faulty Amendment of a Patent Application

Preparing a patent application requires a lot of precision. After the application is filed, there may be situations where an amendment of the application is needed. The amendment can be a way to overcome a novelty or inventive step objection. With regard to amendments, an important rule is that an amendment should not add any subject matter that is not disclosed in the original patent application. Any new matter requires a new patent application. The decision 329/16 issued by the Market Court on 6 June 2016 is a good example of that.

Background

In January 2006, person X sought patent protection on his invention called 'A district heating facility'. The application consisted of one independent claim and dependent claims 2-3. The Patent and Registration Office (PRH) gave its first technical office action in December 2006. In that office action PRH requested the applicant to specify the prior art and what are the new and characteristic features of the invention. In total, PRH issued five technical office actions regarding the application. After each technical office action, the applicant provided a new set of updated patent claim and description documents. In the end, the application consisted of one independent claim and dependent claims 2-5.

Moving from an idea to a patent (if it is granted).
Image courtesy of OpenClipartVectors at Pixabay.com

In September 2014, PRH decided to reject the application based on section 13 of the Patents Act (550/1967). The section 13 provides that an application for a patent may not be amended in such a way that protection is claimed for matter not disclosed in the application at the time it was filed. According to PRH, the applicant has amended his patent claims on several occasions by adding new features. PRH notified the applicant in all technical office actions that on those occasions the applicant shall, under section 19 of the Patents Decree (669/1980), state where those new features are to be found in the basic documents. PRH did not receive this kind of statement from the applicant.  

PRH continued by stating that the independent claim has, in accordance with section 8 paragraph 2 of the Patents Act, many unclear statements and therefore does not express precisely the subject matter for which patent protection is sought. 

Furthermore, PRH stated that the clear parts of the independent claim are lacking an inventive step, a requirement set out in section 2 of the Patents Act. The independent claim includes only conventional ways to take thermal energy from outside air with one heat exchanger and then with another to transfer the thermal energy to indoor spaces.

The Market Court

X did not agree with the decision of PRH and lodged an appeal at the Market Court. X requested the Market Court to reverse the decision of PRH. Furthermore, according to the X, the patent application should be accepted 

1) in accordance with the claims that were under examination in the decision of PRH or 
2) in accordance with the claims the appellant attached into the appeal or 
3) in accordance with the claims the appellant has provided during the Market Court proceedings.

The Market Court issued its decision 329/16 on 6 June 2016.

The Market Court started by stating that in all three scenarios mentioned above there is one independent claim and dependent claims 2-5.

The court then ruled that in all those three scenarios the independent claim adds new matter that is not disclosed in the application at the time it was filed in 2006.

Furthermore, the court ruled that in all three scenarios the independent claim includes unclear statements and that the claim lacks an inventive step.

The appeal was dismissed.