The Market Court: An Apparatus and Method for Treating Pulp Does Not Involve an Inventive Step

The Market Court issued a patent decision 454/16 on 21 July 2016. The court ruled that the applied invention (Apparatus and method for treating pulp) is not patentable because the patent claims do not involve an inventive step. As a result, the court ordered PRH to revoke the patent FI 122775.

Background

Andritz Oy (Andritz) sought patent protection on its invention called "Apparatus and method for treating pulp" on 7 September 2004. The application consisted of two independent claims (1 and 15) and dependent claims 2-14 and 16-24. The Patent and Registration Office (PRH) granted a patent for the invention (FI 122775) on 29 June 2009.

FI 122775, Figs. 1a-1b.

Metso Paper Sweden AB (Metso) lodged an invalidation claim against the patent. During the invalidity proceedings at PRH, Andritz filed amended claims first on 16 October 2013 and later on 12 May 2014. PRH granted a patent for the invention on 1 December 2014 in accordance with the amended claims provided on 12 May 2014 (independent claims 1 and 12 and dependent claims 2-11 and 13-21).

Later on, the company name Metso was changed to Valmet AB (Valmet).

Valmet did not agree with the decision of PRH and lodged an appeal at the Market Court. Valmet requested the Market Court to reverse the decision of PRH.

The Market Court

According to section 1 paragraph 1 of the Patents Act (550/1967), anyone who has, in any field of technology, made an invention which is susceptible of industrial application, or his or her successor in title, is entitled, on application, to a patent and thereby to the exclusive right to exploit the invention commercially, in accordance with this Act.

According to section 2 of the Act, patents may only be granted for inventions which are new in relation to what was known before the filing date of the patent application, and which also involve an inventive step with respect thereto. Everything made available to the public in writing, in lectures, by public use or otherwise is considered to be known.

According to section 25 paragraph 1 of the Act, the Patent Authority shall revoke a patent on account of an opposition [inter alia] if the patent relates to an invention that does not satisfy the requirements of sections 1 and 2.

The Applied Claims

The independent claims 1 and 12 (translated with the help of CA2578004 A1):

1. An apparatus for treating pulp, said apparatus comprising at least one liquid-permeable surface rotating around a shaft, onto which surface a pulp layer is formed, means for feeding the pulp being treated into the apparatus, means for discharging the treated pulp from the apparatus and means for removing filtrates from the apparatus, characterized in that the apparatus is provided with at least one inside construction for forming at least two treatment sections in the apparatus in such a way that each of the sections is connected to means for feeding at least one pulp so that the pulps treated in the sections come from essentially different treatment stages and to pulp removal means so that the treated pulps are removed from the apparatus separately, whereby the apparatus comprises a first and a second treatment section, the pulp feeding means of the first thereof being connected to a first treatment stage with first treatment conditions and the pulp feeding means of the second thereof being connected to a second treatment stage with second conditions.

12. A method for treating pulp, in which method the pulp is fed onto a liquid-permeable surface rotating around a shaft of the treatment apparatus, onto which surface a pulp layer is formed, wherefrom liquid is removed, and the treated pulp is removed from the apparatus, characterized in that a first layer of pulp is formed on the rotating surface, said pulp coming from a first treatment stage, and in a distance from the first layer in the longitudinal direction of the shaft a second pulp layer is formed, said pulp coming from a second treatment stage, and the pulp layers are treated essentially separately from each other.

Prior Art

The prior art in this case consists of the following documents:

O1: US 5641402
O2: US 5275024
O3: WO 92/22703
O4: US 4551248.

Novelty and Inventive Step

The court stated that the drum filter defined in the applied invention is new compared to the solutions defined in the prior art. 

The court then moved on to assess the inventive step regarding the claims 1 and 12.

The court considered that the apparatus described in the claim 1 and the apparatus described in the prior art O1 have only one difference: the former is describing a drum filter whereas the latter is describing a disc filter.

The court stated that the invention described in the O1 is solving the same problem as the drum filter described in the claim 1 of the applied invention. The court also stated that, according to the description of the O1, the disc filter and drum filter are alternatives regarding apparatus for treating pulp in the pulp and paper industry.

According to the court, the use of drum filter does not require any particular technical solution. Consequently, it is considered to be obvious to the person skilled in the art. The technical solution defined in the claim 1 does not involve an inventive step.

The method described in the claim 12 comprises the same technical features as the apparatus described in the claim 1. Consequently, this claim does not involve an inventive step, either.

The invention is not patentable.

As a result, the court returned the case to PRH and ordered PRH to revoke the patent FI 122775.

The Market Court: A Method and System for Relaying and Managing Call Messages Is Not Patentable

The Market Court issued a patent decision 453/16 on 20 July 2016. The court ruled that the applied invention (Method and system for relaying and managing call messages) is not patentable because the original patent claims are lacking novelty and they do not involve an inventive step. Furthermore, the secondary claims do not involve an inventive step.

Background

Oy Exrei Ab (Exrei) sought patent protection on its invention called "Method and system for relaying and managing call messages" on 31 January 2006. The application consisted of three independent claims (1, 21 and 41) and dependent claims 2-20, 22-40 and 42-43. The Patent and Registration Office (PRH) granted a patent for the invention (FI 117912) on 14 April 2007.

FI 117912, Fig. 2.

Miratel Oy (Miratel) lodged an invalidation claim against the patent, but PRH dismissed the invalidation claim on 6 May 2008. Miratel then lodged an appeal at the Board of Appeal at PRH. The Board of Appeal accepted the invalidation claim and returned the case to PRH on 14 October 2011. PRH revoked the patent on 17 February 2012. According to PRH, the independent and dependent claims do not involve an inventive step.

Later on, the company name Exrei was changed to Everon Ab (Everon) and Miratel into Ascom Miratel Oy (Ascom Miratel).
  
Everon did not agree with the decision of PRH and lodged an appeal at the Market Court. Everon requested the Market Court to reverse the decision of PRH. 

Furthermore, according to Everon, the patent application should be accepted in accordance with the claims that were under examination in the decision of PRH or, if that is not possible, in accordance with the claims attached into the appeal (independent claims 1, 17 and 33 and dependent claims 2-16, 18-32 and 34-35).

The Market Court

According to section 2 of the Patents Act (550/1967), patents may only be granted for inventions which are new in relation to what was known before the filing date of the patent application, and which also involve an inventive step with respect thereto. Everything made available to the public in writing, in lectures, by public use or otherwise is considered to be known.

According to section 8 paragraph 2 of the Act, the application shall contain [inter alia] a precise statement of the subject matter for which patent protection is sought.

According to section 13 of the Act, 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 section 25 paragraph 1 of the Act, the Patent Authority shall revoke a patent on account of an opposition [inter alia] if the patent relates to an invention that does not satisfy the requirements of section 2, or if the patent contains subject matter not included in the application as filed.

Prior Art

The prior art in this case consists of documents D1-D20 (a list with document names can be found in the decision). However, the court decided to dismiss the D4 because its publication date was not unambiguous.

The Original Patent Claims

The independent claims 1, 21 and 41 (translated with the help of US 20090016511 A1):

1. A method for relaying and managing service calls, wherein a customer terminal sends a call and a service terminal receives an assignment, characterised by transmission of the call information from the customer terminal to the server (120), in which the server-based data on the service providers comprise data for establishing a connection to the service provider's service terminal and additional service provider data, whereby a call arriving at the server activates the server's selection of a service provider on the basis of the data contained in the call (130) and said additional data (140), and to send an assignment based on the data of the call to the service terminal (150) in accordance with the contact information of the selected service provider.

21. A system for relaying and managing service calls that comprises customer terminals (230, 250) for sending calls and service terminals (270) for receiving assignments that is characterised by the system comprising a server (210) that has memory (214) for storing the information of the service providers, which comprises data for establishing a connection to the service provider's service terminal (270) and additional service provider data, with the system further comprising the means (212, 230-250) for relaying the call data from a customer terminal (230, 250) to the server (210), whereby the server is arranged to be activated on the incoming call and perform selection of a service provider on the basis of the data contained in the call and said additional data, and to send an assignment based on the data of the call to the service terminal (270) in accordance with the contact information of the selected service provider.

41. A server (210) for relaying and managing service calls in a system that comprises customer terminals (230, 250) for sending calls and service terminals (270) for receiving assignments, characterised by the server having memory (214) for storing the information of the service providers, which contains data for establishing a connection to the service provider's service terminal and additional service provider data, with the server further comprising the means (212) for receiving call data from a customer terminal, whereby the server is arranged to be activated upon the incoming call and select a service provider on the basis of the data contained in the call and the said additional data, and to send (216) an assignment based on the data of the call to the service terminal in accordance with the contact information of the selected service provider.

The court considered that all the features of the independent claim 1 are found in a prior art D1a. The D1a is an issue of a customer magazine produced by Ascom Miratel. The D1a introduces a software called CareWin. The software is used to receive safety calls and alarms. This software is, according to the court, a method for relaying and managing call messages, in which a customer terminal (safety phone) sends a call and a service terminal (caretaker of a person responsible for the service) receives an assignment and in which there is a transmission of the call information from the customer terminal to the server (CareWin-software).

The court then stated that the independent claims 21 and 41 consist of the same technical features as defined in the claim 1.

The court concluded that the independent claims 1, 21 and 41 are lacking novelty and they do not involve an inventive step. 

The Secondary Patent Claims

The independent claims 1, 17 and 33 (translated with the help of US 20090016511 A1, the changes are written in red):

1. A method for relaying and managing service calls, wherein a customer terminal sends a call and a service terminal receives an assignment, characterised by transmission of the call information from the customer terminal to the server (120), in which the server-based data on the service providers comprise data for establishing a connection to the service provider's service terminal and additional service provider data, whereby a call arriving at the server activates the server's selection of a service provider on the basis of the data contained in the call (130) and said additional data (140), whereby the said additional data comprising data concerning the services provided by the service provider, whereby the selection of the service provider will be based at least on the call- contained data concerning the service need and said additional data on the services provided by the service provider, and to send an assignment based on the data of the call to the service terminal (150) in accordance with the contact information of the selected service provider, whereby the method includes 

- the server comprising a log memory for storing data pertaining to calls that have arrived and/or assignments sent,  

- storing an acknowledgement saved on the server concerning the reception of an assignment by a service provider and/or an acknowledgement for the completion of a service and 

- invoicing the customer for the services on the basis of said log data.

17. A system for relaying and managing service calls that comprises customer terminals (230, 250) for sending calls and service terminals (270) for receiving assignments that is characterised by the system comprising a server (210) that has memory (214) for storing the information of the service providers, which comprises data for establishing a connection to the service provider's service terminal (270) and additional service provider data, with the system further comprising the means (212, 230-250) for relaying the call data from a customer terminal (230, 250) to the server (210), whereby the server is arranged to be activated on the incoming call, whereby the said additional data comprising data concerning the services provided by the service provider, whereby the selection of the service provider will be based at least on the call- contained data concerning the service need and said additional data on the services provided by the service provider, and perform selection of a service provider on the basis of the data contained in the call and said additional data, and to send an assignment based on the data of the call to the service terminal (270) in accordance with the contact information of the selected service provider;
-whereby the said server of the system includes 

- a log memory for storing data pertaining to calls that have arrived and/or assignments sent, 

- means (214, 218) for storing an acknowledgement saved on the server concerning the reception of an assignment by a service provider and/or an acknowledgement for the completion of a service and 

- means (214, 218) for invoicing the customer for the services on the basis of said log data.

33. A server (210) for relaying and managing service calls in a system that comprises customer terminals (230, 250) for sending calls and service terminals (270) for receiving assignments, characterised by the server having memory (214) for storing the information of the service providers, which contains data for establishing a connection to the service provider's service terminal and additional service provider data, with the server further comprising the means (212) for receiving call data from a customer terminal, whereby the server is arranged to be activated upon the incoming call, whereby the said additional data comprising data concerning the services provided by the service provider, whereby the selection of the service provider will be based at least on the call- contained data concerning the service need and said additional data on the services provided by the service provider, and select a service provider on the basis of the data contained in the call and the said additional data, and to send (216) an assignment based on the data of the call to the service terminal in accordance with the contact information of the selected service provider;
-whereby the said server of the system includes 

- a log memory for storing data pertaining to calls that have arrived and/or assignments sent, 

- means (214, 218) for storing an acknowledgement saved on the server concerning the reception of an assignment by a service provider and/or an acknowledgement for the completion of a service and

- means (214, 218) for invoicing the customer for the services on the basis of said log data.

Ascom Miratel argued first that the claims are amended in such a way that protection is claimed for matter not disclosed in the application at the time it was filed. Furthermore, Ascom Miratel argued also that the amended application does not contain a precise statement of the subject matter for which patent protection is sought. The court dismissed these arguments.

Now it was time to assess whether the invention, in the form of the secondary claims, is new in relation to what was known before the filing date of the patent application, and also involves an inventive step. 

The secondary claim 1 defines, inter alia, how the server comprises a log memory for storing data pertaining to calls that have arrived and/or assignments sent and how the invoicing is based on the log data. The prior art D1a does not contain any information of storing data pertaining to calls that have arrived and/or assignments sent. Therefore, according to the court, the invention defined in the claim 1 is new in relation to the prior art D1a.

However, the court stated that the description of the invention does not explain any technical effect achieved based on the type of data stored and the type of log data used in the invoicing. The description only explains that the method is solving a problem regarding the automation. The court then added that also the method defined in the prior art D1a is automatized.

The court then stated that it would be obvious for the person skilled in the art to use the stored call and/or assignment data in invoicing. The person skilled in the art also understands that the software introduced in the prior art D1a might comprise a feature, or it is possible to add such a feature into the software, in which data, pertaining to calls that have arrived and/or assignments sent, is used.

Therefore, according to the court, the invention defined in the secondary claim 1 does not involve an inventive step.

The court then stated that the secondary claims 17 and 33 comprise the same technical features as the secondary claim 1. Consequently, these claims do not involve an inventive step, either.

The invention is not patentable.

The action is dismissed.

The Market Court: The Applied Invention (Limitation of Voltage Pulse) Does Not Involve an Inventive Step

The Market Court issued a patent decision 452/16 on 20 July 2016. The court ruled that the applied invention (Limitation of voltage pulse) is not patentable because it does not involve an inventive step.

Background

Va­con Oyj (Vacon) sought patent protection on its invention called "Limitation of voltage pulse" on 20 June 2007. The application consisted of two independent claims (1 and 5) and dependent claims 2-4 and 6-12. The Patent and Registration Office (PRH) granted a patent for the invention (FI 119669) on 30 January 2009.

FI 119669, Figs. 1-2.

ABB Oy (ABB) lodged an invalidation claim against the patent. Vacon answered by filing amended patent claims (independent claims 1 and 5 and dependent claims 2-4 and 6-11), but PRH accepted the invalidation claim and revoked the patent on 22 March 2012. According to PRH, the independent claims 1 and 5 are lacking novelty and the claims 1-11 do not involve an inventive step.
  
Vacon did not agree with the decision of PRH and lodged an appeal at the Market Court. Vacon requested the Market Court to reverse the decision of PRH. Furthermore, according to Vacon, the patent application should be accepted in accordance with the amended claims that were under examination in the decision of PRH.

The Market Court  

According to section 2 of the Patents Act (550/1967), patents may only be granted for inventions which are new in relation to what was known before the filing date of the patent application, and which also involve an inventive step with respect thereto. Everything made available to the public in writing, in lectures, by public use or otherwise is considered to be known.

The independent claims 1 and 5 (translated with the help of EP2020742): 

Claim 1:

Method for controlling the output voltage pulses of a PWM frequency converter, in which PWM frequency converter is a network bridge (10) for rectifying the alternating voltage of the supply network into the DC voltage (U_DC) of the DC intermediate circuit, which is filtered with a filtering capacitor (C_DC), a load bridge (11) comprised of phase switches implemented with power semiconductor components, which forms the AC output voltage (U, V, W) from the DC voltage of the intermediate circuit for controlling the load (M),

characterized in that for setting the average speed of change in the output voltage in connection with each change of state of the output voltage at least one power component controlled by a phase switch is controlled such that before the output voltage remains in its position subsequent to the change of state it is on at least once for a short period, typically of less than 1µs (a micropulse), in the position prevailing before the change of state, and a filter containing passive components, with which the voltage of the micropulses is filtered into the final output voltage of the frequency converter.

Claim 5:

Arrangement for controlling the output voltage pulses of a PWM frequency converter, in which PWM frequency converter is a network bridge (10) for rectifying the alternating voltage of the supply network into the DC voltage (U_DC) of the DC intermediate circuit, which is filtered with a filtering capacitor (C_DC), a load bridge (11) comprised of phase switches implemented with power semiconductor components, which forms the AC output voltage (U, V, W) from the DC voltage of the intermediate circuit for controlling the load (M), and a control unit,

characterized in that for setting the average speed of change in the output voltage in connection with each change of state of the output voltage at least one power component controlled by a phase switch is fitted to be controlled such that before the output voltage remains in its position subsequent to the change of state it is on at least once for a short period, typically of less than 1µs (a micropulse), in the position prevailing before the change of state, and that the arrangement comprises a filter containing passive components, with which the voltage of the micropulses is filtered into the final output voltage of the frequency converter.

Novelty

Prior art contains the following documents:

- D1: Deisenroth H., Trabert C. Vermeidung von Überspannungen vei Pulsumrichterantrieben. ETZ. 1993, Bd. 114, Heft 17, s. 1060–1066, and

- D2: DE 4203054.

The court considered that the invention is new in relation to what was known before the filing date of the patent application. According to the court, the prior art does not include a solution in which a micropulse technique is combined with a filter containing passive components.

Inventive step

The court considered that the purpose of the combination of a micropulse technique and a filter containing passive components is to reduce the average speed of change in the output voltage. If the speed of change is too high, it could damage a motor connected to the frequency converter. The description of the invention does not define any other effect which is acquired by using simultaneously a micropulse technique and a filter containing passive components.

According to the court, the reduction of the speed of change by using a micropulse technique or a filter containing passive components is known from the prior art D1. Therefore, it would have been obvious to the person skilled in the art to combine a micropulse technique with a filter containing passive components.

The appellant also argued that the invention is reducing the costs, size and weight of the required apparatus. The court dismissed these arguments because the claims do not include any features that would clearly highlight these benefits.

Therefore, the invention does not involve an inventive step.

The action 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.