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This article addresses the delicate matter of using and abusing technical expert reports in patent cancellation trials, and reviews a case that made strict use of said reports.
According to Romanian patent law, if the patent is found to lack novelty, this is sufficient to cancel the patent partially or as a whole. Inventive step is examined only if novelty is confirmed.
Inventive step under Romanian patent law is very much similar to most European jurisdictions, including the European Patent Office ie, any invention that is not obvious to the person skilled in the art does have inventive step.
When patent cancellations were first filed in the mid 1990s, the judges of that time were unfamiliar with patent matters and in particular with technical aspects, so they relied heavily on judicial technical experts.
In the absence of people having knowledge in both patent matters and technical fields, courts had no other option than to appoint team of experts or even request the opinion of various specialists such as university professors.
The litigation referred to in this article relates to a Romanian patent concerning a special type of refractory brick used to weave two different kinds of such bricks in a multi-layer cowper stove (metallurgy). The final decision was given at the end of 2017, but the reasoning was written only in the spring of 2018.
During the proceedings, four different expert reports were drawn by people with different backgrounds: two professors of metallurgy from technical universities, and two patent attorneys with specialisation in mechanics.
Expert reports had the following categories of error:
The questions addressed to the experts had no relation with the particulars of the novelty and inventive step of that patent, but referred to other technical aspects that were not covered by the claims; or
The questions were correct, but the answers given had no relation with the novelty and inventive steps of the patent, as disclosed in the claims.
Let’s see a typical example: the problem-solution approach, a method that is not compulsory according to Romanian law, but widely used especially for inventions directed to products, such as one of the patents discussed here (covering a refractory brick).
The preliminary steps are to determine the field of the invention and the person skilled in the art; the first step is to select the state of the art that is closest to the invention as claimed; the second step is to determine the objective problem to be solved this problem may be slightly different from the problem stated by the inventor in the application; and the third step is to assess whether the invention as claimed, starting from the closest state of art and the objective problem to be solved, would have been obvious for the person skilled in the art at the relevant date; for this step, the implementing regulations provide guiding principles including concrete cases.
By tradition, the question addressed to experts in Romanian patent litigation is “the expert shall establish whether it would have been obvious for the person skilled in the art”.
"In this way, she acquired a complete understanding of the technical teaching of the invention."
This question corresponds to the third step above. In order to respond to it, the expert must select the state of the art that is closest to the invention, determine the objective problem to be solved and answer whether the technical teaching of the invention was obvious at the relevant date.
The appeal judge of the case presented here took a different approach. First, she addressed to the professor of metallurgy very specific questions about the bricks and the multi-layer cowpers.
Second, in the same hearing, she addressed to the inventor some questions directed to the technical teaching of the invention.
Third, she allowed the claimant to make a presentation about the teaching of the invention using real bricks. In this way she acquired a complete understanding of the technical teaching of the invention.
Once the solution is understood, she could understand the state of the art and exercise the three steps for the problem-solution approach.
This is how a young and courageous judge with no technical background managed to deliver a decision in a patent cancellation case using the skill of the experts only for understanding factual matters and putting a symbolic end to the strong influence of the experts.
Raluca Vasilescu is a patent attorney at Cabinet M Oproiu. She can be contacted at: firstname.lastname@example.org
Romania jurisdiction report, Cabinet M Oproiu, novelty, European patent office, patent, patent litigation, invention, metallurgy, Romanian law