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: 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.