Time to make mistakes and time to correct them. Specifics of amending patent formula
Nataliia Abramovych, associate, mediator at Legal Alliance Company
Vitalii Savchuk, senior associate at Legal Alliance Company
Illya Kostin, partner at Legal Alliance Company, attorney-at-law, patent and trade mark attorney
How much talc do you really need (for happiness) if its mass fraction in your patent formula is 1%? Do you really mean one? What do you think how much a unit is? Could you prove it in court?
District administrative court of Kiev is viewing a unique dispute between patent holder and Ministry of economic development and trade of Ukraine (further "Ministry") on amending formula of patent for invention – medicinal agent.
Patent holder found a mistake in the formula of patent for invention, notably, amount of one of adjuvants (that is talc) was indicated as 1,0 mass% instead of 0,73 mass%. Correction of mistake was dismissed by conclusion of Ministry. As a result, patent holder took legal action and demanded to declare the conclusion of Ministry unlawful and to abolish it, and liability of Ministry to amend State registry of patents of Ukraine for inventions by means of publication of data about amending formula of invention, due to patent of Ukraine according to description of invention and examples given in it, in official bulletin "Industrial property"
What practical problems did patent holder have to face during judging of this dispute?
Compliance of term for going to administrative court, that is six months from the day when a person learnt or had to learn about breaking of his rights, freedoms and interests.
Ex facte, it could seem obvious that term for going to administrative court starts from the day when appealing conclusion of Ministry was made, and according to which patent holder’s rights were broken.
There is an alternative approach, apparently. By the opinion of Ministry, expiration of term for going to administrative court should start from the date of giving a patent of Ukraine for invention, formula of which contains a mistake. It seems that if patent holder knew the formula of invention when granting patent conclusion was made, he had to litigate just such conclusion.
Due to exposition of the stated, patent holder could correct the mistakes, made in patent, only during six months from the date when patent granting conclusion was made. Such approach is not right, since:
- extrajudicial way of correcting a technical mistake in patent does not have any time restrictions and could be used by a patent holder at any moment during effect of patent (Provision on State registry of patents for inventions of Ukraine, approved by the order of Ministry of education and science of Ukraine of 12 April 2001 №291);
- in such case, subject-matter of administrative action is just declaring unlawful and abolishing the conclusion of Ministry on amending State registry of patents for inventions of Ukraine by correction of a technical mistake in formula of invention. Such actions of Ministry were pre-eminently the first to break rights of patent holder.
Thus, term for going to administrative court on appeal of refusal of Ministry to correct technical mistake in formula of invention starts from the date of acceptance of such conclusion.
Matter of technique
Current legislation of Ukraine does not contain any clear list or limits for technical mistakes that could be made in formula of invention. In connection with this, two key questions appear before going to court:
- Does a patent for invention contain a mistake and whether it is technical?
- Could correction of a mistake change scope of legal protection in patent for invention?
On the basis of proof duties, patent holder should produce evidence of mistake presence in patent for invention.
Basic means of proof are experts’ conclusions that, from the moment of entry of new version code of practice into legal force, could be given on the request of persons in dispute.
So, patent holder gave experts’ conclusions that, in general, contained the following points:
1. Amount of adjuvant given in formula is obviously a technical mistake, and corrections of it (that is changing amount of such element in formula of invention) could not lead to changing invention gist and will have the same result;
2. The aim of patent for invention applicant was not to limit lower threshold of value of quantitative content of substance in formula of invention pre-eminently 1,0 mass% value.
It is important to emphasize attention on the last conclusion. It could seem if a formula contains the given amount of a substance that is 1%, invention should contain pre-eminently such volume. However, the question should be examined individually in every specific case, basing on gist of invention and role of a substance in its compound.
Overwhelming conclusion of Court of Appeal of England and Wales on understanding of information about value of quantitative content of substances given in formula of invention (dispute between Smith & Nephew рlc and ConvaTec Technologies Inc) is a bright example.
Thus, ConvaTec Technologies Inc. is an owner of European patent dealing with process (way) of silvering of gel fibres that is used for dressings. Agent, that relieves compounding of silver with polymers, is used in patent process. Information that agent should contain concentration "from 1% to 25% of total volume" is given in formula of patent.
In turn, Smith & Nephew plc developed a new process, the difference of which is that concentration is not more than 0,77%, and it does not violate the patent, from their point of view.
As a result of judging Court of Appeal of England and Wales abolished the preceding conclusion and accepted that Smith & Nephew plc violated the right of intellectual ownership of ConvaTec Technologies Inc. During settling the dispute two key questions were examined:
1. How much did the patent holder limit values 1% and 25%, videlicet: whether the following values should be taken as accurate, in other words, whether any concentration of the compounding agent less than 1% or more than 25% oversteps the limits of invention formula, or patent holder used standard set of numbers to show the range of quantitative value of a substance (in other words, embraced all values using mathematical rounding rules to come to integer "1" and "25").
2. Could a qualified specialist in appropriate sphere of technologies understand the numbers given in a form of integers (with decimal places) as relative values?
Having examined all the materials of the case, court came to the conclusion that any numeral symbols should be taken according to general context where they are used. Thus, a linguist or a lawyer could consider number "1" to be "one" (not more or less). At the same time specialists in appropriate sphere of technologies could consider "one" to be a range of values transcending an integer. Referring to a number of cases, the court made a conclusion that the range "from 1% to 25%" covers all the values = 0,5% and <25,5%.
The court based this position on the fact that in case, if patent holder wants to limit lower or upper threshold of amount of according substance by a particular number, it should be given in a form of a number with a few decimal digits in the formula of patent.
Additional argument pointed to the fact that concentration of appropriate substance is not critical in the formula of invention and does not change its gist. In other words, amount of substance both 0,5% and 1% is interchangeable elements and leads to the same result.
In our opinion, similar approach should be used by Ukrainian courts. Taking British colleagues as an example, court should not have a formal approach to determination of presence or absence of a mistake and its character, however, it should fully analyse all given conclusions of experts, understand gist of invention and amount of adjuvant in formula of invention. Nowadays, we rather sceptically think whether Ukrainian courts will follow British example. However, creation of Superior court of intellectual property could solve the problem and let judges possess appropriate knowledge, examine subjects and reasons of similar disputes more deeply and in details.
Connect with the authors:
Nataliia Abramovych, associate, mediator at Legal Alliance Company, firstname.lastname@example.org
Vitalii Savchuk, senior associate at Legal Alliance Company, email@example.com
Illya Kostin, partner at Legal Alliance Company, attorney-at-law, patent and trade mark attorney, firstname.lastname@example.org