Introduction
The Patents Act is fairly straightforward when it comes to novelty and inventive step requirements, and the relevant rules correspond closely to similar rules under the European Patent Convention. In order to be patentable, an invention must be new compared with the state of the art prior to the filing date of the patent application and must involve an inventive step. The state of the art is held to comprise everything made available to the public by means of written or oral description, by use or in any other way. This is well known and well understood. However, what may not be as clear cut is exactly what it takes for, for example, an oral presentation to become available to the public, or what it takes to prove that the oral presentation included sufficient technical information to render an element that falls within the scope of a patent claim obvious to a skilled person.
Norcape Biotechnology AS filed a patent application (NO 20042188) on May 26 2004. The application was directed towards a hydrolysed marine protein product, the process for the production thereof and its application. The patent was examined and on February 20 2006 a Norwegian patent was granted. An opposition was filed by Marine Bioproduct AS on November 20 2006, but the patent was maintained. On October 30 2014 Membranteknikk AS filed a request for administrative review.
Claim 1 of the patent stated:
"Hydrolysed marine protein product, characterized in that it comprises a reduced level of monovalent ions and biogenic amines (NPN) and other rest products of enzymatic, cooking, acids and microbial degradation or combination of these, wherein the level of monovalent ions and biogenic amines are at least reduced to 40% of the original."
Claim 2 stated "Product according to claim 1, characterized in that the level of monovalent ions and biogenic amines are reduced by combining ultrafiltration (UF) and nanofiltration (NF)".
The patent also included method claims. Notably, the independent method claim included ultrafiltration and nanofiltration steps.
Administrative review is provided for in Section 52(b) of the Patents Act and allows anyone to request the Norwegian Industrial Property Office (NIPO) to declare a granted patent fully or partly invalid. The review must be independent of the initial patent examination and can consider only whether the patent actually fulfils the patentability requirements set out in Sections 1 and 2 of the Patents Act – that is, novelty, inventive step and patentable subject matter can be reviewed.
According to claimant Membranteknikk, the patent did not fulfil the requirements of Section 2 of the Patents Act with respect to novelty. The reasoning provided in the request was that the claimant allegedly gave a presentation at a conference in Reykjavik on April 29 2004 that anticipated the claims of the granted patent, because it included a disclosure of production of marine protein products through use of ultrafiltration and nanofiltration.
The claimant provided the following evidence in support of its allegations:
- a list of conference attendees;
- confirmation from the conference administrator, Frank Minck, that the presentation had been given;
- photographs of the presenters, Odd Henning Sirnes and Rasmus Gundersen; and
- a copy of the presentation (referred to as 'D9'), which disclosed ultrafiltration and nanofiltration used in the same context as the patent, but did not explicitly mention monovalent ions or biogenic amines.
The patentee contended that the claimant had submitted insufficient evidence to prove that a presentation had actually been given on April 29 2004 with the content disclosed in D9. This contention was based primarily on the following arguments:
- The list of attendees showed that Sirnes and Gundersent were registered to attend the conference, but not that they actually attended.
- The conference programme listed a presentation titled "Membrane filtration. Recent Development and application examples", but this was insufficient to show that a presentation had actually been given and that its content corresponded to that of D9.
- The photographs disclosed no substantial information.
- D9 itself was not dated. Further, the copy provided was a PDF file in PDF Format 1.6, which was introduced in December 2004. Consequently, it could not be the original presentation.
The patentee also noted that the conference was closed (with attendees by invitation only), that D9 had never been published in writing and that it was not provided as part of any opposition.
NIPO held that in order for a solution to be part of the prior art, it must have been disclosed in a manner which is sufficiently clear to enable a person skilled in the art to apply the solution. In the case at hand, it was therefore necessary first to determine the scope of the technical information provided to the audience as part of the presentation, and then to determine whether the technical information provided guidance with respect to the invention defined in the patent in a manner that disclosed the invention.
If an invention has been disclosed, it must then be determined whether this disclosure was to a "larger or indeterminate group of persons". If the group of persons is limited in a manner that implies an obligation of confidentiality, the disclosure is not necessarily a disclosure to the public.
NIPO referred to European Patent Office (EPO) Technical Board of Appeal Decision T 1212/97, which found that "information content made publicly available by a lecture cannot be put beyond reasonable doubt by any evidence of the lecturer alone, as the lecturer is in a quite different position to a member of the audience". Referencing this decision, NIPO found that the starting point for determining the information that a presentation or lecture has actually been provided to the public is the audience's perspective. Particularly relevant evidence would include notes made by audience members – preferably corresponding notes from two or more independent audience members – and handouts.
With respect to the statements made in support of the alleged fact that a set of slides had been presented in a given form, NIPO held that such statements could easily be influenced by the dispute and also "colored by memory, which for most of us does not improve over time".
NIPO found that it was unclear whether the conference in Reykjavik had been open to the public. Further, it noted that no evidence of the audience's perspective or handouts had been provided. The declaration from Minck and the photographs were given little weight. According to NIPO, it was doubtful whether Minck could be considered an ordinary member of the audience in view of his role as organiser. Moreover, his statement was very general and substantiated no actual disclosure of the invention, but rather only that a presentation regarding membrane filtering had been given. NIPO referred to the patentee's assertion that a presentation can be changed and reused over time.
Based on this, NIPO found that the weight of the evidence submitted by the claimant was insufficient to prove that the information provided to the audience through the presentation would enable a skilled person to work the invention. NIPO therefore concluded that D9 could not be considered part of the prior art when the application was filed, and that the requirements of Section 2 of the Patents Act were fulfilled.
NIPO also awarded costs to the patentee.
The decision shows that NIPO follows similar decisions of the EPO Boards of Appeal and requires a high level of certainty with respect to whether an oral presentation is public (in the sense that it makes information available to a larger or indefinite group), and whether the information presented actually discloses the invention to the public in a manner that would enable a skilled person to work the invention. The testimony of persons that may have an interest in the outcome of NIPO's decision is not given much weight, particularly if the presentation was made several years before the testimony. Instead, NIPO wants to see evidence that is contemporary with the oral presentation, preferably in the form of handouts or notes made by more than one member of the audience.
The decision provides valuable guidance for parties to future disputes, both those that seek to invalidate a patent and those that want to defend it – at least for now. The decision has been appealed to the Norwegian Board of Appeal for Industrial Rights, so further developments may be forthcoming.
For further information on this topic please contact Tom Ekeberg or Anne Sønstevold at Zacco by telephone (+47 22 91 04 00) or email ([email protected] or [email protected]). The Zacco website can be accessed at www.zacco.com.
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