From March to September 2016 the team is joined by Guest Kats Emma Perot and Mike Mireles.

From April to September 2016 the team is also joined by InternKats Eleanor Wilson and Nick Smallwood.

Sunday, 1 March 2015

Subject Matter Relationships: the need for strictness, complexity and fuzziness

Valentine’s Day made this Kat think about relationships: the cruelty, the complexity and the cuddles. This progressed to patent law and how subject matter ‘relates’ to other subject matter. How is patent law cruel, complex and cuddly? For those of you who are not as obsessed with patents as I am, a few words of background. Practitioners spend a lot of their time showing:

* how claims are novel and inventive over what is known (i.e. patentability over the prior art),
* why the claimed matter represents the same invention as described in the priority document (and so is entitled to priority), and
* why amendments to the claims don't go beyond the contents of the patent application as originally filed (i.e. why the amendments don't add matter).
In patent litigation a lot of people spend a lot of time thinking and arguing over whether the claims cover particular activities being carried out by third parties (i.e. whether there are products and activities which are infringing the claims).

Cruelty: what is the ‘same invention’ for priority and for double patenting?

Good fences make good neighbours
The European Patent Office (EPO) finally decided on what the ‘same invention’ was for priority purposes in G2/98. Before this decision there was the possibility that trivial features or those that did not contribute to the technical effect could be ignored when assessing whether the invention described in the priority document was the same as that described in the Convention application. However, G2/98 held that the ‘same invention’ for priority required a strict test. The example was given of overlapping European applications where one needs to decipher which subject matter in an application is citable against which subject matter in another application, based on the filing date to which it is entitled. That is only possible if the test is strict, essentially requiring every single feature to be present for it to be the ‘same invention’.

That makes sense. However it leads this Kat to wonder about double patenting. Is it the same strict test? Given the logic of G2/98 are trivial features enough to avoid being the same invention for double patenting purposes?

As an aside, priority could become even more cruel. The UK already has a doctrine of poisonous priorities (see Katpost here) and now the EPO Enlarged Board is going to be thinking about it too in a referral from appeal proceedings on T557/13.

Complexity: added matter and who is being protected?

Manipulating matter in a specification
When does added matter arise? On the face of it added matter at the EPO is quite simply about something being ‘directly and unambiguously derivable’. Examiners have treated this as requiring very explicit disclosure. However, increasingly the EPO is accepting ‘implicit’ disclosure. It is clear that ‘implicit’ does not mean what is ‘obvious’ from the text. It is something more subtle (see Katpost here on added matter and the new EPO Guidelines).

If one wants to generalise a feature from a specific embodiment, things gets more complicated, and require consideration of whether the relevant feature is inextricably linked to another feature. Deleting a feature requires this three-part test. Clearly if one is in the situation of having to generalise or delete features, something has probably gone wrong and one is attempting to manipulate the original contents of the specification in ways that were not intended when drafting it. At this point I will only mention selection inventions in passing, to minimise the risk of losing non-chemical readers.

Things get even more complex for disclaimers. At the EPO there are two types of disclaimer. There is the ‘G2/10’ type which is based on disclosure in the application as filed (see Katpost here). Such a disclaimer will add matter if it results in ‘new technical information’. The second type of disclaimer is the ‘G1/03’ type where the wording does not need to come from the disclosure of the application. This is only possible in certain situations: to overcome prior art that is only relevant to novelty and to disclaim embodiments excluded from patentability for legal reasons.

Is all of this fair? Well, third parties should have a level of certainty as to what amendments could be possible. However, equally applicants need to be given a little bit of leniency as they are often surprised by what turns up in the Search. Clearly balancing things in the right way seems to lead to complex tests.

Cuddly: claim boundaries for infringement are malleable

So, we’re now at the point of using our finely honed claim scope, which is entitled to priority and does not add matter, to catch infringers. Here things become a little bit fuzzy. We suddenly find there are different ways of construing the claims and parties in litigation can disagree on about this (see a slightly old discussion of this here from Alan White). In the US different constructions can be used in different forums. The broadest reasonable interpretation is used at the United States Patent and Trademark Office (USPTO), whilst the Courts can use narrower constructions.

The bigger the net, the more
infringers you catch
A little bit of extra scope for catching the infringer

Courts seem to have ways of stretching the claims a little bit to catch infringers. Article 2 of the Protocol on the Interpretation of Article 69 EPC says we can take account of ‘equivalents’ when look at the scope of protection ‘conferred’. In the UK we still have the principle of ‘purposive construction’, occasionally thought of as the ‘Protocol Questions’, and probably no doctrine of equivalents (see Katpost here). The US does have a doctrine of equivalents but this seems to come in and out of fashion, it is difficult to define exactly and it is intimately tied to the prosecution history.

The scope of a claim is complex, but seems to become even more complex, and presumably more unpredictable, in the hands of the Courts. This Kat wonders whether this gives Courts that little bit of flexibility they need to catch an infringer that is a ‘bad guy’. In the UK omnibus claims used to be the way the Courts would give themselves a lot of leeway to find infringement somehow (see PatLit post here on a recent omnibus claims case).

Appreciating all the different factors that impact on patent claims makes one appreciate why things are as they are. This Kat does wonder, though, at how little thought is given to making the patent system easier to use. We don’t have a test for that because it does not directly impact on the tasks that Patent Offices and Courts are doing. This Kat believes that results in users of the patent system finding it more difficult than it should be.


Jeremy Nicholls said...

This post is a great summary. Thank you. Just one comment - it seems to perpetuate the widespread EPO-centric view that EPO examination practice is a reasonable yardstick against which national courts' decisions should be compared. In my view, this is the wrong way about. The EPO should be taking into account real litigation as it really happens. However, I doubt that this will happen until the UPC has some jurisprudence under its belt. Until then, we must continue to toil under a self-regulating EPO which distills its examination approach from the Aether.

MaxDrei said...

Great post. I put it to readers that fairness to all, in ANY "First to File" environment, necessitates always using the same test for what a document "makes available" to the notional "person skilled in the art". By "always" I mean, regardless whether the disclosure is in the context of Paris Convention priority Y/N, novelty Y/N or additional subject matter Y/N.

Where else but at the EPO is the same test used, for deciding what a document (whether the priority document, D1 or the application as filed) discloses to its reader?

There is another vital reason, just as important as fairly dividing up patent rights amongst rival inventors who are independent of each other, for holding to the same definition of "diclosure" regardless of context. It is to maintain respect for patent law amongst engineers, scientists and the business and investment community. Patent law must be seen to be logical and fair. Otherwise populist politicians will legislate it away, to the detriment of innovation and prosperity. So long as "disclosure" always means the same thing, I can explain EPC logic to inventors and clients.

If "disclosure" means the same thing under Art 54, 87 and 123(2) EPC then of course the EPO is going to be as strict on 123(2) as it is on Art 54 when assessing whether D1 destroys novelty. I think you can't have your cake (strict novelty) and eat it too (liberal on 123(2) EPC).

Anonymous said...

Dr Ali,

Your question is simply not defined enough.

"Easier to use" - but by whom? - for what purpose?

CLEARLY, the system, as complicated as it is, is complicated precisely because there are NO such easy answers and there are simply multiple parties involved with competing interests.

The quote from Einstein fits here (paraphrased):

The system should be as simple as possible - but no simpler.

Taking the big picture view clearly establishes the fact that simply wanting a simpler system ignores the fact that a simpler system is not appropriate.

Anonymous said...


I would posit that your comment (with which I agree in no small part) is a necessary outcome of the lack of stare decises.

When you lack the discipline to make any single court decision binding, you necessarily create the possibility of the "rule of law" completely arbitrary and vacillating from one decision to the next.

It is easy to see that such a vacillating and uncontrolled driver is simply no way to set the path for what examiners (already a bit wayward given that they will tend to put their interpretation on decisions) can use as "takeaways" from court decisions.

Anonymous said...

Well done MaxDrei, I wholeheartedly agree. I cannot count the number of times the problem arises in Opposition proceedings that parties want different standards applied depending on which problem is being addressed. Which one you take is perhaps open to debate depending on circumstances, but I firmly believe you should pick one standard and stick with it at least throughout one case.
Well done too Kat for raising the topic in the first place. Indeed it is not an easy one. There was a symposium last year on Art 123 in the EPO and that was very interesting in that it highlighted all the problems and the differing international viewpoints. indeed it was fascinating to see that there are indeed very differing viewpoints. If I might be so bold in these turbulent times, I found such a symposium a very good idea and would encourage more such events.
Less well done I'm afraid for Jeremy. The comment smacks rather of "lets have another dig at the EPO" or "why don't they just do the same as the others?". Well, my understanding of "Yardstick" is that you look for who is doing it best and measure yourself against them. This theoretically leads to you improving in an attempt to reach the standard set by the yardstick. Of course, the other option is to bring the yardstick down to where you are, but I'm not sure that's really how it's supposed to work.

MaxDrei said...

Following up that last anon, I do not subscribe to the Jeremy Nicholls notion of "toil", in his:

"we must continue to toil under a self-regulating EPO which distills its examination approach from the Aether"

On the contrary, I am thankful to be able to address the validity of patents under the crisp and clear jurisprudence of the EPO, as opposed to the fuzzy stuff handed down by some or other national Supreme Court.

But perehaps Nicholls is a litigator, who i) likes his jurisprudence fuzzy and ii) is frustrated that he cannot impose on the EPO some binding precedent or other that happens to get his juices running?

Anonymous said...

The test for 123(2) is actually very simple: there must be a disclosure of the same subject-matter in the application as filed. Unfortunately, carrying out this test is not always easy and / or may easily lead to a disappointing outcome.

Do those that think the EPO should become more flexible agree in principle that 123(2) should be about the "same" subject-matter?

Or should it be allowed to generalise the originally disclosed subject-matter, as long as the claimed invention remains novel and inventive and sufficiently disclosed?

Should it be allowed to add limitations to a claim that were present in the original application, but in a different context?

Should it be acceptable for a granted claim to be novel over the application as originally filed?

When you lack the discipline to make any single court decision binding, you necessarily create the possibility of the "rule of law" completely arbitrary and vacillating from one decision to the next.

It's not stare decisis, but G 2/98 and other G-decisions are binding for all practical purposes. When a particular legal issue arises, it strikes me as sensible to first let several "lower court" decisions test the waters and then, when the time is ripe, make a referral.

I'm not convinced that stare decisis is better. One unfortunate decision in this complicated field of law and you're kind of stuck with it.

Suleman Ali said...

Jeremy, I think the volume of cases going through the EPO means that it does have a certain everyday wisdom that the Courts lack sometimes. Conor v Angiotech and HGS v Lilly are examples I think where the UK High Court and Court of Appeal took an impractical view, and needed to be corrected.

MaxDrei, I think the approach you suggest would be too strict on added matter, and I think in Europe too many applicants are having too spend too much time and money dealing with added matter objections. A more lenient approach, such as the US one might be better, perhaps combined with a 'broadest reasonable construction' when assessing novelty.

Anon at 15:54, I don't think there has been a serious attempt to make the patent system simpler, and so it may be possible. It is something that is not really considered when decisions are made, and so is not a component in evolving case law.

Jeremy Nicholls said...

Some of the comments above make my point (1/3/15, 13:07) nicely: the idea of the EPO as reasonable yardstick is deeply entrenched in some minds.

The fact is that EPO practice deals only in validity, not infringement. Taken at face value, assessment of validity is a cerebral exercise, which can be carried out according to a set of precepts and policies. It is a task which the EPO carries out very well. However, when assessing validity, you implicitly rely on an abstract notion of what infringement could occur. Now, unless you have been involved in a few closely-contested infringement cases, you cannot appreciate the extent to which the interpretation of the claimed subject-matter can change once it is exposed to the real world of real infringement by real, highly-motivated competitors. The testing-to-destruction to which a patent can be subjected in an infringement suit makes the EPO's procedures look like playtime in Wonderland.

The "fuzzy stuff" to which Max Drei dismissively refers (1/3/15, 16:22) is what can emerge when the "crisp and clear jurisprudence of the EPO" meets reality.

MaxDrei said...

This is developing into an interesting thread. Thanks Mr Nicholls and Suleman Ali for your comments.

First, I do agree that there is a large difference between the procedures for fact-finding in England and those in EPO oppositions. Even so, I doubt that many see fact-finding at the EPO as "playtime". But, Mr Nicholls, I do think that it is only the knowledge how facts are found in courts practising English law that keeps some witnesses anywhere near honest at the EPO.

Second, Suleman Ali, I wonder if Art 123(2) is different in engineering (where every author uses different terminolgy) from chem/bio where(but correct me if I'm wrong) everybody uses the same terminology. I do clearance opinions in engineering. I need a strict line on 123(2). But not mindlessly strict. The same strictness as with novelty is what I ask for. Isn't that the only way to be fair with rival inventors who have filed, on different dates, for generally the same concept (say a gearbox)but with differences in the fine detail?

Third, when the test for what the claim means is "what was the writer using the language of the claim to mean" I think that what comes out of full-blown adversarial opposition proceedings at the EPO is as "real" ie as close to the real world of engineering and science which the notional claim reader inhabits, as anything the courts can manage.

But, fourth, Mr Nicholls I do agree that bifurcation is bad. Fortunately, the UPC courts in Germany are not bound by the German Constitution to bifurcate and have already indicated that their default will be to not bifurcate.

Jeremy Nicholls said...

Some years ago, after a couple of particularly illuminating infringement cases, I asked DG3 if there was any mechanism for feeding back relevant information on court decisions. Their reply was courteous but uncomprehending - why would they want to know about national court decisions?

One of the most important, as yet little discussed roles of the UPC will be to provide a jurisprudence which is informed by infringement actions and which can influence subsequent EPO practice.

MaxDrei said...

Ah, the incomprehension you encountered Mr Nicholls, within DG3, of national court decisions in patent infringement matters. Why so?

It could be a consequence of i) the dominance within DG3 of German legal thinking ii) the imperative under the German Constitution to bifurcate infringement and validity and iii) reliance on the established caselaw of the mainland Member States under the Doctrine of Equivalents.

But they do quote English Decisions when it suits them. So perhaps they have studied English cases, at least to the extent of knowing that one must construe the claim "as if the infringer had never been born".

Suleman Ali said...

MaxDrei, I'm sure you're right biotech requirements are different to engineering ones. Freedom to operate analysis is close to impossible in many sectors of biotech where pending applications have impossibly broad claims, and I'm sure that very few go as far as trying to predict possible amendments of third party cases. So I agree in the engineering situation you describe that a strict added matter test is needed. My perspective is a biotech practitioner one where we have issues in Europe about moving features between embodiments which don't come up in any other territory.

Anonymous said...

Just to let you know, the EPO does indeed look at some things that are happening in the outside world, although it must be borne in mind that for examiners particularly the boss does like them to do some work now and again.
None the less in Opposition proceedings in mechanics I've seen things argued pretty impressively, so I don't think EPO thinking is so very far from reality. This view was backed up when at the art. 123 symposium mentioned further up this blog my impression was that EPO examiner, European attorney and Japanese examiner & attorney viewpoints were within the range you would usually find within examining/opposition divisions within the EPO, but the US had very different views. None the less, if European & Japanese examiners and attorneys can basically agree, I don't think it can be asserted that they have no idea of the "real world".
One point which I would like to raise is the fact that EPO cases are basically decided by technically based individuals. I've never honestly understood how outside Judges, who have no doubt studied law very well, can realistically decide about thermodynamics, although I must admit I have been very impressed with the decisions I've read from UK judges. Surely the UPC will replace decisions from technically qualified experts by decisions from those who are not technically qualified. While some aspects of caselaw may improve perhaps, the majority of decisions seem to be "inventive step yes/no", so who is most appropriate for this kind of work?

MaxDrei said...

Suleman Ali, you write:

"we have issues in Europe about moving features between embodiments which don't come up in any other territory"

That may be so but perhaps Europe is the only place that gets it right. Tell me, is it always a good novelty attack, if you have to mix and match (move) features between the various embodiments of D1 to get to an anticipation of the claimed feature combination by the disclosure in D1?

I know,I know. The answer is "It depends". Well, so too, and equally so too, methinks, with Art 123(2) EPC, and that whether in engineering or in any other technical field.


Anonymous said...

I do not remember the actual case, but wasn't there a major biotech player who had a Canadian application - as written, so no new matter added was even necessary - that had in its submission such a prodigious number of possible permutations so as to exceed the number of elapsed years in the age of the universe?

Anonymous said...

I find the comment "but perhaps Europe is the only place that gets it right" more than just a little brazen and entirely unsupported.

It is needlessly expressed and weakens, rather than strengthens, the views expressed by that individual.

MaxDrei said...

Interesting comment from anon, Monday at 19:05, concerning the 123 Conference. Not only there but also in the Tegernsee Group archive, and from daily experience prosecuting in Europe, Japan, China, Korea, it is striking that there is much consensus throughout the First to File world and that the USA is on its own. But now that the USA also has First to File, I expect the courts of the USA to become familiar with the imperatives and exigencies of First to File as opposed to First to Invent. First and foremost is the appreciation that the drafting of the specification is an event that precedes in time the base date on which the validity (novelty and obviousness) of that claim falls to be assessed. That means that the prior art known to the PHOSITA must be deemed to be known also to the writer of the claims, at the time of writing the specification, before the application is filed at the Patent Office.

Tim J said...

To try to understand the American point of view, please may I introduce Article 83 EPC (sufficiency of the disclosure) into the equation?

Suppose my invention solves a technical problem by providing a member A and a member B, fastened together. The description discloses only one embodiment, in which they are fastened together by screws. There is no disclosure of other types of fastener, nor is the generic word "fastener" used.

Nevertheless, a skilled engineer can see, from my description of how the invention works, that the nature of the fastener is unimportant. He can see that what's important is that the two members are fastened together somehow, and the problem will be solved.

My claim as originally filed recites a member A, a member B, and a fastener which connects them together.

I believe this claim would be supported by a sufficient description under Article 83. Even though only one type of fastener is described (screws) the skilled person is easily able to carry out the invention across the whole range of the claim with other fasteners.

Now suppose that my claim as originally filed merely recited a member A, a member B, and a screw which connects them together. Can I subsequently amend the claim to change "a screw" to "a fastener"?

No, in Europe there will be an instant objection under Article 123(2), that the original description did not disclose any other type of fastener.

An onlooking European practitioner might just scoff and say that I should have drafted my claim better.

Yet all along, the skilled engineer reading the application has been enabled under Article 83 to use other types of fasteners than screws. He can see that other fasteners would work. Unfortunately, in Article 123(2) terms, you have huge difficulties showing that he is led to it directly and unambiguously. It might be obvious that other fasteners would work, but that's not the same thing.

How does all this look to an American?

Historically, if such a situation arose in the USPTO, you would probably have had no difficulty whatsoever amending the claim from "a screw" to "a fastener". The US examiner would just check that something in the description corresponded to the claimed fastener. Yes, that screw in the preferred embodiment is good enough.

Nowadays, that's still quite possibly true in the USPTO, but the US courts are getting more careful. However, typically their objection will not be added matter, but the requirements of 35 USC 112 for a written description and enablement. The US equivalent of Article 83 EPC, rather than Article 123(2).

In recent years, there have in fact been cases where the US courts have held a broad claim invalid under section 112. However, if the skilled person can see, on the basis of the written description, that other fasteners would work, then I think it's quite possible that a claim broadened from "a screw" to "a fastener" would be upheld.

My conclusion? Both the Americans and the Europeans look at amendments in the light of what the skilled person can derive from the application as originally filed, but they do so with very different lenses. The European lens uses a novelty test. The American lens uses a sufficiency test (written description and enablement).

Anonymous said...

Dear Tim J
Of course in the patent world there is no such thing as an absolute. While the EPO does claim to use a novelty test, the guidelines do indeed stress that an explicit disclosure is not necessary, and, especially in priority questions there is a body of case-law that talks about having the same idea, i.e. again not quite explicit disclosure. Thus it's not quite as black and white. But then, nobody said this job was easy.
I think a good part of the problem is the US history of disclosure mainly being aimed at "possession of the invention" rather than the "able to be carried out" in EPO history. Rather then two pairs of lenses, perhaps we could talk about meeting in the middle, but coming from different sides?

Anonymous said...

Tim J,
Thanks for the US perspective.
The problem I see is one of FTO analysis after publication and before grant. If you've only specifically taught and claimed the screw, then the client who wishes to produce the same device using bolts may be ok (doctrine of equivalents aside for the moment). But if claim is amended during examination to fastening means, then the scope of protection is broadened, and said client who decided to go ahead with producing the device will now be producing a device that clearly infringes, no?

MaxDrei said...

If we want to discuss in this thread the USA/ROW divide, let us not forget that US law requires a "written description" of the claimed invention in the application as filed to demonstrate (as that last anon just mentioned) "possession" of the said invention on the filing date. If your US client gets upset about 123(2) strictness, just explain that it is like his 35 USC 112 "written description" which just happens also to be of "novelty test" (rather than "is it obvious" level of strictness).

It is a pity that this was not discussed at the EPO 123(2) Conference. It is yet another example of a "Rose by Any Other Name" though, in USA/ROW patent law.

MaxDrei said...

One more thought: it is the amendment of a claim, into an undisclosed intermediate generalisation, to create a patentable selection invention, that bedevills trans-Atlantic discussions of the allowability of prosecution amendments. Americans can't see why is is adding "matter" and why the "written description" at the time of filing is deficient.

Anonymous said...

OK - several points of feedback:

The biggest problem I have with a comment like that of Anonymous @ 6:08 is the ASSUMPTION that a common middle is present.

You are talking about two different sovereigns - with two different sets of laws.

You simply cannot make the assumption being made. More likely than not, you will have two vectors in three dimensional space and there will be NO intersection.

Anonymous @ 7:16 - you begged your conclusion by setting doctrine of equivalents to the side. Put that doctrine back in in order to come to a reasonable conclusion.

MaxDrei @ 8:05 - please do not conflate 112 and 102. The two different laws are most definitely NOT "just happens also to be of 'novelty test'"

You also ASSUME that the intermediate is simply not captured already in the document as filed. This is not a valid assumption, as generally speaking, applications are filed with the standard provisos to allow such selections. This is a standard best practice, as it is (and should be) known that examiners choice of prior art (and their take on that choice) simply cannot be known a priori, and that the document - as filed - must be robust enough to be able to take positions along a spectrum. This is not "bedevilment," as much as it is us "scriviners" doing our job.

Anonymous said...

Anonymous @ 7:16 - you begged your conclusion by setting doctrine of equivalents to the side. Put that doctrine back in in order to come to a reasonable conclusion.

Ok, Tim, you got me...almost. You see there is no harmonisation on the doctrine of equivalents in Europe, and therein lies the rub... EPC 2000 included an amended Protocol on the interpretation of Article 69 intended to bring about uniformity at a national level, however, no definition of what was meant by an "equivalent" was included in the Protocol.

Tim J said...

Anon 16:37 - wrong attribution. Anon 14:11 is not me.

MaxDrei said...

anon at 14:11 how you love that word "conflate". As you know, the written description requirement is there to stop applicants adding matter after their filing date. See the important written description case Ariad v Lilly, for:

"..a description that merely renders the invention obvious does not satisfy the requirement.”

which tells us that a prosecution amendment to subject matter that is obvious from the application as filed can still fail the written description requirement. More support than that is required, from the application as filed. That's what the EPO says too. As I said, in both jurisdictions, it is more a novelty than an obviousness test.

Anonymous said...

Oops. Sorry Tim.

Anonymous said...

dear Anon 14:11
Prey why should you have a problem with the comment that there may be a common middle? Would a compromise really be so disastrous? You note that it was not said that the middle had been reached, but approached and that can also happen in 3-dimensional space. In Europe I find it very helpful to understand where US is coming from and indeed how you deal with problems is influenced by what can be gathered. I also find it helpful to see how examination in Munich and The Hague for the EPO approached each other in a similar manner until areas of incompetence were introduced. This must inevitably cause a certain consistency, which could potentially help in making all our lives easier.
I have no trouble with gradual development towards common ground - it's radical rebuilding by those who do not have a full overview and do have personal agendas that grates a bit.

Anonymous said...


As you know, there is a separate section in US law that is actually geared to stopping the adding of material.

Regardless, 112 is still entirely distinct from 102/103 as far as the purpose of the requirements.

You attempting to move the goalposts here from a similar to 102 OR similar to 103 only shows that you have doubled down and now are twice as wrong.

Would have been far better to simply admit your mistake to begin with.

Anonymous said...

Anonymous @ 18:45,

You ask a fair question, so let me make sure you understand.

First re-read my post. Do you understand the two vectors in 3-D space and how they may actually never hit?

That visual picture exemplifies the problem: you ASSUME a middle where none may actually exist.

Once again, it is critical to remember that two very different sets of Sovereign laws are being discussed. Yes, both sets deal with patents, and yes, there are international treaties attempting to make some transitions possible between the two sovereigns. But you should keep you eyes on the ball and maintain the understanding that at the end of the day you are talking about two different sovereigns and their laws.

Your notion of "compromise" then is simply fatally flawed as to exactly "what" can be compromised. It is not the comment that I have a problem with, it is that there is no common middle to be had. The vectors may approach, but will not intersect.

I do regret that the medium we have to work with is not perfect, and that a certain level of "grating" may be inevitable. I certainly would rather sit down with you over a pint and discuss this in person.

MaxDrei said...

And as you know, anon, claim amendments at the USPTO don't "add matter" but at the EPO they often do. Given that claims can disclose matter, also under US law, I find it odd that a prosecution amendment of them, to an intermediate generalisation not disclosed in the application as filed, cannot ever "add matter" to the application pending at the USPTO.

Is Suleman Ali still there, following this thread. I wonder if he has anything to add.

Anonymous said...

Dear Anon 14:11 & 20:03
First, absolute agreement that the medium is not perfect and a pint is preferable. But less so on the question of approach. I fear it keeps getting forgotten what patents are really all about, 'cause if you take it back to first principles on either side of the pond, the basic idea is presumably at least similar. While my assumption that there is a middle may cause you troubles, the assumption that there is not a middle must be at least as problematic. And my assumption that there is a middle is at least based, even in 3D systems, on the premise that there must be a point of closest approach no matter what system. Many of the differences, if brought back to basics, can be put down to terminology or usage, but not to intrinsic incompatibility. Thus the idea that there is no middle shows a blockage as compared to the idea that there's a middle we haven't found yet. It is truly fascinating to explore the similarities in the systems and the number of "ah what they must mean is..." is notable. The bottom line is that an innovator should get the protection he deserves for his innovation. The bit that worries me, and the bit that makes me think you may even be right, is that the basic idea of "the invention" is so rarely discussed - rather arguments are based on this comparison of text against that, this rule against the other. It is depressing how often the question what has been actually invented gets lost in all the formalised procedures. Determine the IPC class based on claim 1, do a novelty search, use problem solution approach etc can all be done without asking what has been invented. Broad claims and nebulous descriptions can hide this most fundamental of questions, yet can still be processed without the need for thought. It can, as you correctly say, be done (badly) in two totally different ways. But shouldn't both systems be looking to see that the innovator actually gets the protection he deserves?
Perhaps the pint may be better after all...

Anonymous said...

Further to my comment of 23:25, of course, once you take a step away from this potentially common ground (i.e. giving the inventor the protection he deserves) and look towards "moneytization", then there is no problem in seeing two unrelated systems - the one aimed at maximum profit, the other at optimised protection for the public. To do this, you are indeed taking a step away from "the invention", i.e. that irritatingly necessary event outside the IP system that should theoretically take place prior to filing an application (are you paying attention biotech?). It's not a problem, however, since rather than running two systems in parallel, you can harmonize by switching one of the systems over to the other track. You don't even need to change the rules, just change the working conditions at each level - also an indication that the two systems were not so very different after all.

Suleman Ali said...

Hi MaxDrei, yes, I'm following the thread. I like Anon of 23:25's idea of thinking about what has been invented. I think in the ideal world there would be a committee of objective experts funded by government to which inventors would go to to discuss the invention, and they would be granted a scope of protection. No drafting of a specification needed and so no added matter issues (and no patent attorneys). However of course in the real world that's not possible. It's actually not even possible to define an invention. Is it the concept? The claims? The contribution over the prior art? Or the experimental work that has been done? UK Courts cases have regularly shifted between these positions depending on the facts of the case.

It's also useful to know about how added matter is seen in the US. That it somehow takes into account 'possession' of an invention and perhaps even shades of what is made possible by the inventors' work. I think there is an argument that leniency should be given to an applicant to amend claims as they wish WITHIN the broadest reasonable claim scope in the application as filed. Applicants are surprised by what is discovered in the Search, and I think future-predicting in the way the spec is drafted should not be an important part of whether you get a patent for your invention. [I realise there is an issue to be considered over selection inventions]

I do think that the EPO is too strict on intermediate generalisation (and also deleting features). That means that everyday prosecution becomes difficult. I like the way that the EPO allows applicants to disclaim accidental anticipations without needing basis in the spec. I'm tentatively going to suggest that they think about doing something similar with prior art which is citable for inventive step that surprises the applicant. Again in the ideal world we would have different levels of strictness for the different degrees that the Applicant is to blame for lack of basis in the spec. I know of course that is impossible to do in practice.

Of course the big issue is to what extent third parties disadvantaged if we make the added matter test more lenient. If we assume that third parties are using the application as filed as a guide to what claims may be granted, then they are clearly aware of the case. They have the option of making third party observations during examination of the case. However the vast majority of affected third parties do not, presumably due to the time and cost involved. Clearly if we had a system where third parties were regularly filing observations during examination Examiners could be a bit more relaxed about added matter when no one objected to the amendments being made.

Coming to the point about the 'middle ground', I do think the US and European systems should influence each other. Patent law is too complex to be perfect at its inception. It needs to evolve. I remember how the specific, credible, substantial utility test came into EPO thinking when examining new gene cases. I think that was helpful.

We live in times when the EPO is looking at added matter in new ways - giving more weight to implicit disclosure and the overall teaching of the specification. I hope US influence will come into that as needed.

MaxDrei said...


Anonymous said...

As the US discovered when it first looked into the matter of having an active "third party assist" type of examination, such a system is too prone to abuse by large established entities that can afford to harass small start-ups - the type of entity most in need of patent protection, as the type of entity most likely to engage in the profound current-market-destroying disruptive innovation efforts.

Such a system is too one-sided to be of much use in the real world, and would lead to a lower overall innovation rate.

Instead, the focus needs to be on the actual pre-grant examination and a strengthening of patent protection.

Sadly, it is "easier" to aim for a post-grant band-aid and abdicate the ownership of the role of examination to the general public (or at least that portion of the general public that will be so effected by a granted patent so as to induce that other entity to spend money and time doing what is effectively a better examination post-grant.

As I have proposed elsewhere, one answer may be to reverse the general course of weakening patents at every turn and instead strengthen them.

A weakened patent only slides us down a slippery slope to a worthless patent.

On the other hand, strengthening patents would bring along the desired effect (at least the theoretical desired effect) of having the general populace actively involved in looking at published applications.

In the US, I have had clients tell me that they prohibit their workers from looking at patent applications in order to avoid the treble-damage willfulness penalty.

This should be an immediate red flag to all.

I would posit that in order to combat this mindset, that it should be a de facto condition that published applications are known by all in the market - that the treble damages are the starting point, not the exception.

MaxDrei said...

To the anon at 13:21 today:

I think you would like the German system then. It has everything you want except treble damages. Perhaps that is why nearly 70% of all oppositions at the EPO have always been from German companies.

And German manufacturing industry seems to be doing quite well under Germany's patent owner friendly regime, doesn't it?

Anonymous said...

Dear Suleman
I fear you may be asking a lot of EPO examiners, especially in the current climate. An explicit disclosure requires no brain at all, and a "no problem" attitude may arise as production targets become more relevant. There should really be a golden middle path. The "flexible" approach to judging disclosure and intent requires a great deal of capability and self-confidence on the part of the examiner. None the less, it is an attitude which is not unknown and which is to be encouraged, especially bearing in mind that a great number of EPO applications have never been seen by a native speaker. But as I say, to do it, you need an examiner who is willing to take a decision on the authority of his own experience and technical knowledge (or at least that of the division). I don't get the impression this is being encouraged or trained.

MaxDrei said...

This thread is getting a bit old now but there is still something I seek from Suleman Ali and that is whether he is advocating a more liberal approach under Art 123(2) than Art 54.

Consider the "Selection from 2 Lists" jurisprudence of the EPO. Is SA wanting to retain the strict line under Art 54 but loosen it under Art 123(2). I don't see how, without breaking what should be an iron rule, that the patent goes to the party who is first to the Patent Office with a written enabling description of the subject matter claimed, which written description proves as of the filing date that this party was indeed the first to report "planting a flag" on the contested ground.

Suleman Ali said...

Hi MaxDrei

In my post I noted how Courts have some leeway to stretch claim scope a little bit when assessing infringement. That seems a bit strange given how strict examination is on scope for validity. So we choose how strict we want to be given the practical needs of the situation.

I don't think there is anything sacred about needing to be equally strict on added matter and novelty. Let's bear in mind that for disclosure to be novelty-destroying it must simply fall somewhere in the claim scope. For text/matter to be usable to amend claims it must be phrased in a particular way that allows a boundary to be formed for claim scope. The text is performing different functions. There is much less flexibility in the case of text being used to amend claims compared to text which is destroying novelty. So I don't think it's being tremendously unfair or reasonable to be more lenient on added matter.

I would say my perspective is very much of optimising the way the patent system serves its users. At the moment in my opinion the system is causing too many users problems with added matter, which is potentially unfair to them. I think less injustice would happen in the patent system if we were more lenient on added matter as the situations where applicants constructed selection inventions from the disclosure in the specification would be few.

Anonymous said...

Dr Ali,

I think you are a bit too loose with your terminology.

You keep on using the term "added matter" as if doing this should be accompanied with a wink and nudge (perhaps to "even up the scales").

Sorry - I do not, and cannot, buy that.

On the other hand, a generous portion of "equivalance," (or more correctly, a strong pro-patent Doctrine of Equivalence), not only is appropriate, not only obtains that which you seek, but it is a natural and justified position, and importantly does not require anything more than what is in the application as filed.

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