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Sunday, 4 September 2011

Disclosed, disclaimed, disgruntled

Andy Cloughley (Miller Sturt Kenyon, London) suspected that he might not the first to point this Kat to the latest (and keenly awaited) decision from the European Patent Office's Enlarged Board of Appeal -- but he was wrong.  Most of the Kat's patent-oriented readers were (i) on holiday, or (ii) playing catch-up with the piles of work awaiting them on their return from holiday or (iii) stunned by the folly of the England football taking the trouble to beat Bulgaria having first issued their excuses as to why they might be expected to lose (pebbles on the football field, wrong length of grass, no decent players, wind blowing in the wrong direction etc).  Anyway, this fascinating decision, which you can read in all its glorious fullness here, is G 2/10 and it is a 49-page answer to the question:
"Does a disclaimer infringe Article 123(2) EPC if its subject-matter was disclosed as an embodiment of the invention in the application as filed?"
At this point the Kat suspects that some of his non-patent readers might just be glazing over, but don't despair -- Andy has provided a short, succinct note which explains everything even if, as he says [by way of a disclaimer, notes Merpel ...], he has only just seen it himself so hasn't had a chance to study it, so the following comments are "very brief and should not to be taken as gospel". As Andy explains:
"The decision relates to disclaimers – negative technical features, typically excluding from a general feature specific embodiments or areas – and in particular disclaimers of subject matter that was disclosed in the application as filed.

The Enlarged Board states that, where a claim is amended by including a disclaimer of subject matter that has been disclosed in the application, the claim nevertheless infringes Article 123(2) EPC (that is, includes added subject matter) if the subject matter remaining in the amended claim is not explicitly or implicitly disclosed in the application as filed.

The way in which you work out whether something is disclosed is to use the usual added subject matter test under Article 123(2) EPC. This is the time-honoured "what would a skilled person derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the application as filed" following from the Board's earlier decisions in G 3/89 and G 11/91. After the amendment, the skilled person may not be presented with new technical information. 
Point 4.5.5 of the decision is interesting in that it indicates that to avoid an amended claim including a disclaimer of disclosed subject matter from infringing Article 123(2) EPC, it is not necessary to explicitly state in the application as filed that the subject matter being disclaimed is excluded from protection. 
G 1/03 (which relates to disclaimers of undisclosed subject matter and sets strict rules for their use) is said not to be much help to the question of disclaimers relating to disclosed subject matter (point 3.9 of G 2/10)
In short, even if the subject matter of disclaimer in an amended claim is disclosed in the application as filed, the claim can still comprise added matter. This may come as a disappointment to some practitioners. Conversely, it does not necessarily follow that the claim does comprise added matter – it is necessary to review the application as filed using the usual tests to see whether it does".
The IPKat thanks Andy for taking the trouble to set this decision out far more neatly than he could.  Merpel's still not happy, though: she still feels that it's illogical to maintain that something which has been disclosed in the application as filed can ever be regarded as added matter.  She also wonders whether this degree of complexity in the application and interpretation of the EPO's rules serves any valuable purpose, in the great scheme of things, other than making the patent system more baffling and user-unfriendly than it already is.  Whose interests are protected by decisions such as these? What impact do they have in the marketplace in which patents confer monopolies and encourage or protect investment?

Enlarged Board here
Enlarged Blind Spot here
Enlarged Bowel here

24 comments:

MaxDrei said...

The lament from Merpel worries me. It reminds me of the endless whinges from American practitioners unable to grasp the logic behind Art 54(3) EPC. They think the solution to their inability to grasp something very simple is to say that earlier filed but later published art should be available for obviousness attacks as well as for novelty attacks.

But in a First to File jurisdiction, you have to prohibit prosecution amendments that have the effect of transferring to the amender (as second in the race to plant the flag inside the Patent Office) the property that in fact belongs to one who had already planted exactly that flag at least one day earlier.

I think chemical practitioners well understand this. If those who are not European patent attorneys are having difficulty seeing the elegance of the underlying logic of this Decision, that's a communication challenge for EPA's. I'm sure that one of them can explain it well enough to convince Merpel.

Anonymous said...

While the Kat may have had difficulty in recognising the legal certainty providied by the EBoA in G2/10, I am sure she will be shaken out of her state of torpitude when the Board issues its findings in respect of the new referral G1/11.

"Is for the handling of an appeal against a decision of the Examinination Division in respect of the non-repayment of Search Fees according to Rule 64(2) EPC, which does not form part of a decision in respect of the grant of a European patent or the refusal of a European patent application, a technical board of appeal or a legal board of appeal competent."

Can't wait.

Anonymous said...

"Merpel's still not happy, though: she still feels that it's illogical to maintain that something which has been disclosed in the application as filed can ever be regarded as added matter."

That's simply not the point.
I'm with Max3 on this.

It's about whether REMOVING something makes the invention so different from what was originally claimed that the applicant gains an unfair advantage from this.


"She also wonders whether this degree of complexity in the application and interpretation of the EPO's rules serves any valuable purpose, in the great scheme of things, other than making the patent system more baffling and user-unfriendly than it already is."

Funny remark. To me it's like if a British attorney was complaining about the existence of case law...

MaxDrei said...

I wonder which "patent system" Merpel thinks is "baffling" and "user-unfriendly". I can think of at least one jurisdiction that fits. Is she drawing her inspiration from the USA?

But the EPO? Surely not. The EPC, written on blank sheets of white paper, all fresh, in 1973, to avoid the follies and foibles of all pre-existing patent laws, could not be simpler, on the substantive law of patent validity. Nor could it be more elegant. Nor could any patent statute better balance the goal of "reasonable legal certainty" for those who might infringe, with "fair" protection for those who choose to patent their innovations.

Tell us how you would improve it Merpel. Do you think you can do better than 30 years of Darwinian "survival of the fittest" progress during 30 years of intensive debate within DG3, and 30 years of acid commentary on the caselaw of DG3?

Anonymous said...

G2/10 may offer many things, but I am not sure I would describe legal certainty as one of them.

It is the prescriptive approach of T1107/06, that any disclosure of a subset of embodiments inherently discloses its complement, that is legally certain. But technically capapable of being absurd, where, as last anon said, it makes the invention so different from what was originally claimed that the applicant gains an unfair advantage from this.

This is a technically sensible decision where T1107/06 might have been good set theory but bad patent law. But in amounting to the answer "it depends", certain it ain't.

Free Spirit said...

The problem with the decision is its use of the term 'subject-matter'. This is not defined, because it is assumed to have a clear meaning. It doesn't. If by 'subject-matter' you mean 'inventive step', then any time you change the scope of the claim, someone can argue you've changed the inventive step. But why shouldn't you restrict the scope of the claim any way you like? If what remains is still obvious, then the disclaimer won't cure invalidity. If it isn't, what's the objection? The rule that you must disclaim exactly what has been disclosed (no more, no less) has no sense. Frequently what is disclosed is not in a form that is clearly delimited, so section 84 becomes a problem. Excessive and inappropriate formalism!

Anonymous said...

Art 84 is, I admit, a big problem in an Office with 80% of its work in English but only 5% of its examiners with English as first language. How are EPO Examiners supposed correctly to assess what is the "disclosure" to the PHOSITA of a document written in English?

Imagine you are employed as Examiner at the Japanese Patent Office. An Applicant makes an amendment during prosecution. Does it inclue any "new matter"? Well, does it?

Myshkin said...

@Free Spirit:
"But why shouldn't you restrict the scope of the claim any way you like? If what remains is still obvious, then the disclaimer won't cure invalidity. If it isn't, what's the objection?"
If what remains becomes inventive thanks to an undisclosed restriction, you do not see a problem?

What if the application as filed on 06.09.2011 claims "a vehicle", and some years later during the prosecution, say on 06.09.2014, the applicant adds undisclosed restrictions that render the claimed vehicle inventive over the prior art available on 05.09.2011? You still don't see a problem?

Anonymous said...

"Point 4.5.5 of the decision is interesting in that it indicates that to avoid an amended claim including a disclaimer of disclosed subject matter from infringing Article 123(2) EPC, it is not necessary to explicitly state in the application as filed that the subject matter being disclaimed is excluded from protection."

Indeed an explicit statement to that effect is not a necessary precondition. However, without such an explicit statement it will usually be quite hard to find a basis in the application as filed for the exclusion.

(It's easy to predict that in the coming years a lot will be read into point 4.5.5 that isn't there.)

Anonymous said...

"Art 84 is, I admit, a big problem in an Office with 80% of its work in English but only 5% of its examiners with English as first language. How are EPO Examiners supposed correctly to assess what is the "disclosure" to the PHOSITA of a document written in English?"
Maybe you meant to write Art. 123(2).

Are you sure the problem lies with the examiner's knowledge of English and not with the (native English speaking) attorney who just doesn't get that Art. 123(2) is not about "more or less the same meaning", but about "exactly the same scope"?

A well-drafted application can be translated 1-1 into any other language. Patent language is not the language used by Shakespeare.

Probably far more problems are caused by failed attempts to get the actual invention correctly written down in (patent) English. How many inventors nowadays have English as their native language? How many attorneys really do understand the invention in sufficient detail to draft the application in English without risk of messing up some crucial detail?

Btw, Japan has not yet acceded to the EPC.

MaxDrei said...

It's all about what the document "makes available" to the PHOSITA, directly and unambiguously, whether Art 54(3), 123(2) or whether a declared priority is valid. It doesn't always have to be verbatim, to make it available directly and unambiguously. But many EPO Examiners think it does. And many can't see why there is a problem for patent attorney drafters, to take account, in their drafting, of Art 54(3) art.

But I do agree with you, that a high proportion of drafting is done by attorneys who have not grasped what the invention is. Inventors are puzzled, but suppose that the gobbledygook in their very own patent application is explained by the necessity to write in legalese. If only they knew.

Al said...

The trouble, as I see it, with Decision G2/10, which I've now read several times, is that it gives no practical guidelines as to how this issue is to be approached in practice. Imagine you are on and EPO Examining or Opposition Division and an Applicant wants to disclaim something which is disclosed as a positive embodiment in their description. How do you actually determine if the amendment is allowable.

Equally, if you are a European Patent Attorney, how are you meant to advise your client about whether a suggested "disclosed" disclaimer will or will not fall foul of Article 123(2) EPC? This is not something you want to get wrong pre-grant because of the post-grant trap...

G2/10 reads like a fudge to me. They have not actually answered the question referred to them, nor have they given any hints as to how to approach this issue with an real set of facts. It is completely in contrast to a decision like G1/03 which gave very clear, precise guidelines about when "undisclosed" disclaimers could be introduced into a claim.

What seems likely to happen now is that different Boards of Appeal will interpret this G Decision in very different ways, depending on the whim of the Chairman. The result will be conflicting Caselaw, which will in turn require...another referral to the Enlarged Board...

MaxDrei said...

A bit like "technical" then, is it Al? All of the USA holds DG3 up to ridicule, for not defining it properly. Various Technical Boards write various decisions, that tell us whether any particular objective problem is or is not "technical". But in practice, how much of an impediment is it, that DG3 has not yet defined "technical"?

At least we haven't yet suffered the ignominy of a nonsensical, future-incapable definition written by a well-meaning but not technology savvy Supreme Court.

What would you have done? Borrow from the USA the concept of copying claim counts and declaring an interference? Is that a better way, do you think, out of what is inherently a well nigh insoluble problem.

Anonymous said...

To AI:
The way I read the decision, the board simply says: nothing has changed.

An embodiment cannot be disclaimed just because it (the embodiment) is clearly and unambiguously disclosed.

If there is a clear and unambiguous basis for WHAT REMAINS AFTER THE DISCLAIMER, then the disclaimer is OK.

In my view, the referral was an attempt to create ARTIFICIALLY (using the IMHO not-so-logical reasoning of T1107/06 - if a word is disclosed in a dictionary, does that really disclose DIRECTLY, clearly and unambiguously a slightly different dictionary where just this word is missing ?) a further way to slightly amend claims without losing too much protection (to overcome e.g. a lack of novelty which was not "accidental"). The board just said no you may not systematically do that because in many cases that would give you an unfair advantage. Thus my prediction is that things will continue like before the referral.

Anonymous said...

It doesn't always have to be verbatim, to make it available directly and unambiguously. But many EPO Examiners think it does.

Indeed. I've already had a big argument with an EPO examiner (incidentally, one of the rare English native speakers) who repeatedly insisted on a "literal" support for an amendment (as a matter of fact, there actually was literal support, but that's another matter). I think that, regardless of this decision, there are several serious problems in the current application of Art. 123(2) EPC by many (but certainly not all) EPO examiners.

Partly this is an unintended consequence of changes in internal EPO practice. When search and substantive examination were kept a part, it was customary for the examining division to send the application back to the search division if an allowable amendment made a supplementary search necessary. However, when the BEST program was introduced, the EPO powers-that-be quickly felt that it was too tempting for the primary examiner, who is now also the search examiner, to send the application back to himself for a supplementary search and cash in extra production points. So it was decided to restrict very narrowly this possibility. Instead, examiners were told to rely more on R. 86(4) EPC 1973 (which became R. 137(5) EPC 2000) to block such amendments through objections of non-unity.

Then came Ms. Brimelow and her jihad on late divisional applications with new R. 36(1) EPC. Clearly, the examiners were then told to avoid objections of non-unity late in the proceedings, so as not to re-open the 24-month window for filing divisionals. Now, when confronted with an amendment which they didn't foresee during the prior art search, the examiners seem to have only two choices: do an unrewarded and unrewarding supplementary search, or try to reject the amendment on the basis of Art. 123(2) EPC and some fishy interpretation of the "intermediate generalisation" doctrine.

This said, applicants and attorneys also are to blame in the increasingly screwy application of Art. 123(2) EPC. Clearly, if one argues all the time that things are not "obvious" to the skilled person when discussing the inventive step, one should not be surprised that the "skilled person" is also a complete idiot when it comes to "directly and unambiguously" deriving things from the application as filed...

MaxDrei said...

Well said, that most recent anon. The boundary between what is obvious yet not d&a made available, and what is for the EPO implicit, is still not without room for argument but, hey, it's not as if it's getting steadily more fuzzy.

Me, I fondly suppose that we practitioners can better predict today what we will get out of DG3, than we could 10 or 20 years ago.

And if we can do that, we can opine (to our clients wanting clearance opinions) on validity with a greater degree of confidence (however long we have to wait till we see the claims of the divisional).

Merpel said...

MaxDrei -- when I read a line like "I fondly suppose that we practitioners can better predict today what we will get out of DG3, than we could 10 or 20 years ago", I have to ask whether this is a reflection on the efficacy of the current system or on the accrued experience of the writer over the past decade(s)".

MaxDrei said...

Since you ask, Merpel, and as a knee jerk instant reaction, I would cite the annual updates of that EPO DG3 caselaw book, recently praised by Robin Jacob. Can you find in these updates anything new, on patent-eligibility, novelty, inventive step, sufficiency, clarity, and so on? These days it is mostly stuff like whether the Technical Board or the Legal Board shall do the work.

Does that not point to greater legal certainty, on the substantive law of the EPC?

That said, I do take your perceptive point. It has weight, I suspect.

Myshkin said...

@AI:
"Imagine you are on and EPO Examining or Opposition Division and an Applicant wants to disclaim something which is disclosed as a positive embodiment in their description. How do you actually determine if the amendment is allowable."

How does one determine if an amendment is allowable? By applying the normal criteria for Art. 123(2).

In rare cases it might be possible to find a direct basis for the remaining subject-matter. In most cases the question will be whether the application as filed contains an explicit or implicit indication that the complement of the disclaimed disclosed subject-matter (within the broader subject-matter of the unamended claim) has to be considered as well. Whether there is an explicit indication should be relatively easy to determine. For an implict indication it is required that on a technical assessment of the disclosure, the indication is necessarily and unambiguously implied. This is like novelty: a feature is only implicit if a technical interpretation of the document leaves no room for the feature being absent.

"Equally, if you are a European Patent Attorney, how are you meant to advise your client about whether a suggested "disclosed" disclaimer will or will not fall foul of Article 123(2) EPC? This is not something you want to get wrong pre-grant because of the post-grant trap..."

Well, this holds true for most amendments. There is a reason why EPO examiners are told to be strict about Art. 123(2). Anyway, what you should keep in mind is that there is no special privilege for amendments disclaiming disclosed subject-matter.

"They have not actually answered the question referred to them"

The EBA certainly did. The answer is "no". See point 4.5.5: the mere fact that subject-matter is disclosed as being part of the invention does not under all circumstances lead to the conclusion that it cannot be disclaimed.

And the more general question was answered quite precisely: the precise condition is that the remaining subject-matter must be directly and unambiguously derivable from the application as filed. In other words: nothing can be concluded from the mere fact that the disclaimed subject-matter is disclosed in the application as filed.

To be honest, I could have given this answer straightaway. To me it was very clear that G 1/03 certainly never implied that a disclaimer of disclosed subject-matter was automatically allowable. To me it was also very clear that the set-theoretic approach of T 1107/06 was nonsensical. But some Boards thought otherwise, so it is a good thing that this has now been resolved.

Anonymous said...

"Partly this is an unintended consequence of changes in internal EPO practice. (...) Instead, examiners were told to rely more on R. 86(4) EPC 1973 (which became R. 137(5) EPC 2000) to block such amendments through objections of non-unity."

And now back to reality. How many times have you seen R. 86(4) / R. 137(4) / R. 137(5) been applied?

I've once heard that pre-BEST the average number of additional searches ordered by a substantive examiner was 1 per 2.5 years. (So did they do their own additional searches? No, they simply granted because it was not their fault that the search examiner had not foreseen the amendment. Or alternatively, they could only assume that the search examiner had in fact foreseen the amendment but had not found relevant prior art.)

MaxDrei said...

Illuminating comment about pre-BEST from that anon. Many thanks. As an Opponent, it bothered me that so much unsearched matter used to get through to issue. Glad that's now better controlled. I just hope the EPO examining staff continue to keep in mind that so much of the success of the EPO comes from its reputation for being "customer-friendly". Please try to deliver a full measure of "fairness" to Applicants. The level of legal certainty for the public only has to reach the level of "reasonable". Legal certainty to the public does not have to get to 100%, at the expense of treating applicants unfairly.

Sloppy patent application drafting should not be rewarded. Then again, super-human feats of drafting should not be required. A pragmatic assessment of what a document is "making available" to the skilled technical reader ought always to be taken (to balance Art 56 issues against 123(2), as noted by a commentator above).

Anonymous said...

In practice, most added-matter objections result from poorly drafted applications with insufficient fallback positions. US attorneys, in particular, are constantly advised of EPO requirements, but they repeatedly fail to take into account jurisdictions other than their own.

Anonymous said...

And now back to reality. How many times have you seen R. 86(4) / R. 137(4) / R. 137(5) been applied?

Often enough to notice that it is being applied significantly less often since the introduction of new R. 36(1).

I've once heard that pre-BEST the average number of additional searches ordered by a substantive examiner was 1 per 2.5 years.

In my opinion, that is an underestimate, even if it is true that it didn't happen nearly often enough. It is however also true that EPO management explicitly restricted that practice and reminded examiners of then-recent R.86(4) when BEST was introduced. I know, because I was there.

Norman said...

I'm a bit late with this, but it seems that there is old English case-law consistent with the EBA decision, for the reasons pointed out by the third comment by Anon: "[T]he Court has to consider the real nature of the amendment, for it is sometimes found that an amendment careful drawn so as to be in form by way of disclaimer has the real effect of altering the nature of the invention.” Re IG Farbenindustrie AG’s Patents (1930), 47 R.P.C. 289 citing Ralston v Smith (1865) 11 HL Cas 223

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