BREAKING: Mr Justice Arnold finds Conversant patent infringed but invalid for added matter in Conversant v Huawei
The FRAND/SEP saga continues today with a UK High Court decision on the validity of Conversant's patent for 3G mobile phone technology. Mr Justice Arnold found that Conversant's patent is essential and infringed by Huawei and ZTE, but invalid for added matter: Conversant v Huawei [2019] EWHC 1687 (Pat).
For a background summary of the dispute see IPKat here. In short, the case relates to standard essential patents (SEP) patents and Fair Reasonable and Non-Discriminatory (FRAND) licences. SEPs are patents protecting a technology which its owner has declared to be essential to the implementation of one or more of the telecommunications standards. To prevent anti-competitive behavior, standard setting organisations require SEP holders to licence the technology on Fair Reasonable and Non-Discriminatory (FRAND) terms.
In Huawei v Conversant [2019] EWCA Civ 38 (IPKat post here), Conversant sued both Huawei and ZTE in the UK courts for infringement of, what it claimed, were its essential patents. Conversant sought an injunction, damages and a declaration that it had made FRAND offers to the defendants. Huawei and ZTE responded that the English courts did not have the jurisdiction in determining the terms of a global FRAND licence. The Court of Appeal found that the English courts did have jurisdiction to decide on the global licence terms, but could not force Huawei to enter into a global licence (but that they may face and injunction on the basis of the UK designation). The UK courts could, however, decide on the validity of the patent and whether Huawei infringed. Huawei and ZTE have been given permission to appeal this jurisdictional aspect of the dispute to the Supreme Court (the hearing is expected in October this year, see IPKat post here).
In the latest decision Mr Justice Arnold considered whether Conversant's European Patent (UK) (EP1797659) was essential, valid and infringed by Huawei and ZTE. Conversant argued the UK patent was essential to an aspect of the 3G Universal Mobile Telecommunications Standard ("UMTS"), Uplink DRX. Conversant also argued that Huawei and ZTE marketed mobile phones complying with the UMTS, and were therefore infringing the patent. Mr Justice Arnold accepted Conversant's arguments. The Judge agreed that Huawei was not infringing under a literal interpretation of the claims. Particularly, the claims did not cover Uplink DRX under a literal interpretation, but could be found to be essential and infringed under the doctrine of equivalents (Actavis) (para. 201).
Mr Justice Arnold then went on to consider whether the SEP was valid. Huawei and ZTE argued that the claims extended to subject matter that was not disclosed in the application as originally filed. Another recent High Court decision considered the issue of added matter in detail (Novartis v Dr Reddy's Laboratories [2019] EWHC 92 (Pat), IPKat post here). In the present case, Mr Justice Arnold considered five separate added matter arguments from Huawei and ZTE, the fourth of which hit home. Particularly, Mr Justice Arnold agreed with Huawei and ZTE that an amendment to claim 1 during prosecution added matter to the claim that was not disclosed in the patent application as originally filed.
Interestingly, the feature in the claim in question was also the feature relied on by Conversant for their equivalence argument for infringement. Huawei and ZTE argued that Conversant's position on equivalence undermined their case that the same feature was not added matter. In particular, Huawei and ZTE argued that Conversant's argument for equivalence effectively "erased" the limitation introduced into the claim during prosecution. However, Mr Justice Arnold did not agree:
Mr Justice Arnold then went on to consider obviousness and insufficiency attacks from Huawei and ZTE, but rejected each of these. The patent was therefore found to be essential and infringed, non-obvious, sufficiently disclosed, but invalid for added matter (para. 260).
Of course, if a patent is not valid, it can not be enforced against an infringing party and need not be licensed (FRAND or otherwise). This latest decision, if upheld in higher courts, would thus render the jurisdictional aspect of the dispute irrelevant, at least with regards to patent at issue in this case. It therefore seems likely that Conversant will seek to appeal this latest UK High Court decision. However there is another technical trial coming in a few months time - that will likely be more telling about the strategy of the parties. The dispute, already in its 5th year, thus looks ready to continue for some time to come.
For a background summary of the dispute see IPKat here. In short, the case relates to standard essential patents (SEP) patents and Fair Reasonable and Non-Discriminatory (FRAND) licences. SEPs are patents protecting a technology which its owner has declared to be essential to the implementation of one or more of the telecommunications standards. To prevent anti-competitive behavior, standard setting organisations require SEP holders to licence the technology on Fair Reasonable and Non-Discriminatory (FRAND) terms.
In Huawei v Conversant [2019] EWCA Civ 38 (IPKat post here), Conversant sued both Huawei and ZTE in the UK courts for infringement of, what it claimed, were its essential patents. Conversant sought an injunction, damages and a declaration that it had made FRAND offers to the defendants. Huawei and ZTE responded that the English courts did not have the jurisdiction in determining the terms of a global FRAND licence. The Court of Appeal found that the English courts did have jurisdiction to decide on the global licence terms, but could not force Huawei to enter into a global licence (but that they may face and injunction on the basis of the UK designation). The UK courts could, however, decide on the validity of the patent and whether Huawei infringed. Huawei and ZTE have been given permission to appeal this jurisdictional aspect of the dispute to the Supreme Court (the hearing is expected in October this year, see IPKat post here).
In the latest decision Mr Justice Arnold considered whether Conversant's European Patent (UK) (EP1797659) was essential, valid and infringed by Huawei and ZTE. Conversant argued the UK patent was essential to an aspect of the 3G Universal Mobile Telecommunications Standard ("UMTS"), Uplink DRX. Conversant also argued that Huawei and ZTE marketed mobile phones complying with the UMTS, and were therefore infringing the patent. Mr Justice Arnold accepted Conversant's arguments. The Judge agreed that Huawei was not infringing under a literal interpretation of the claims. Particularly, the claims did not cover Uplink DRX under a literal interpretation, but could be found to be essential and infringed under the doctrine of equivalents (Actavis) (para. 201).
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| Huawei phone cases |
Interestingly, the feature in the claim in question was also the feature relied on by Conversant for their equivalence argument for infringement. Huawei and ZTE argued that Conversant's position on equivalence undermined their case that the same feature was not added matter. In particular, Huawei and ZTE argued that Conversant's argument for equivalence effectively "erased" the limitation introduced into the claim during prosecution. However, Mr Justice Arnold did not agree:
In my judgment, however, this argument is misconceived, since it is an argument about the scope of protection, and not about disclosure. Infringement by equivalence cannot give rise to an added matter objection.None-the-less, Mr Justice Arnold found that the amendment of the claim during prosecution had introduced matter that was not disclosed in the application as originally filed, and that the claims were therefore invalid (para. 226).
Mr Justice Arnold then went on to consider obviousness and insufficiency attacks from Huawei and ZTE, but rejected each of these. The patent was therefore found to be essential and infringed, non-obvious, sufficiently disclosed, but invalid for added matter (para. 260).
Of course, if a patent is not valid, it can not be enforced against an infringing party and need not be licensed (FRAND or otherwise). This latest decision, if upheld in higher courts, would thus render the jurisdictional aspect of the dispute irrelevant, at least with regards to patent at issue in this case. It therefore seems likely that Conversant will seek to appeal this latest UK High Court decision. However there is another technical trial coming in a few months time - that will likely be more telling about the strategy of the parties. The dispute, already in its 5th year, thus looks ready to continue for some time to come.
BREAKING: Mr Justice Arnold finds Conversant patent infringed but invalid for added matter in Conversant v Huawei
Reviewed by Rose Hughes
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Thursday, July 04, 2019
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Reviewed by Rose Hughes
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Thursday, July 04, 2019
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I have some difficulties in following the reasoning. How can a claim be novel and inventive and a the same time comprise added subject-matter?
ReplyDeleteIt means that the judgement on novelty or inventive step is carried out out with the added subject-matter comprised in the claim. A claim can have either the priority or filing date as effective date. The part of the claim relating to added subject-matter should however not be there and no effective date can be attributed to it. Which is then the prior art to be taken into account?
At least the German federal court disregards the part relating to added subject-matter when assessing the claim on novelty and inventive step, see BGH X ZR 161/12 (Wound treatment device) once a patent has been granted. During examination an application ought to be refused if the added subject-matter is not removed from the claim, see BGH X ZB 5/16 (Phosphatidylcholine).
At the EPO, a claim comprising added subject-matter leads to a refusal in examination or to a revocation in opposition, cf. G 1/93. Such a claim is never compared to any prior art, as it does not have a raison d'être.
Why is English practice so different?
There is nothing in the EPC that prevents a claim from being new and inventive while at the same time infringing Art. 123(2). Just apply the law as it is written. The "effective date" for determining the state of the art for the claimed subject-matter is determined by Articles 54 and 89 EPC. There is nothing in those provisions that prevents the EPO from establishing the relevant state of the art if a claim happens to infringe Article 123(2).
Delete"The part of the claim relating to added subject-matter should however not be there and no effective date can be attributed to it."
This is pure myth that unfortunately has taken root in the minds of a few EPO examiners. Please cite one passage in the Guidelines or in the Case Law book that supports your position. Again, it is Articles 54 and 89 that determine the relevant state of the art, and those provisions do not require the claim to comply with Article 123(2).
"At the EPO, a claim comprising added subject-matter leads to a refusal in examination or to a revocation in opposition, cf. G 1/93. Such a claim is never compared to any prior art, as it does not have a raison d'être."
This arrogantly assumes that an opposition division's decision on 123(2) is always correct and will survive appeal, which has no basis in reality.
If the patent proprietor has an at least arguable case on 123(2) (that did not convince the OD but still might convince the BoA), there is nothing to stop the OD from continuing with inventive step (even though it is not obliged to do so). Then if the BoA on appeal agrees with the patent proprietor on 123(2), a remittal for examining inventive step has been avoided.
This is how the English courts deal with cases. Justice Arnold was well aware that Conversant's case is dead if the patent is invalid for added matter, but he still decided on obviousness and sufficiency (and infringement) so that the case can be dealt with in full on appeal. There is no legal reason why EPO divisions could not do the same.
Dear “Explanation given”,
ReplyDeleteThat I disagree with you will not be a surprise, as due to plain logic a claim infringing Art 123(2) cannot be at the same time new and inventive. A claim has for effective date either the priority or the filing date, or in other words the date of the youngest feature in the claim, see Art 54 and Art 89. This is the only point on which I can agree with you.
An offence under Art 123(2) occurs during prosecution, that is after filing, so that such a feature has as effective date the date at which the offence occurs, which is thus way beyond the priority and/or the filing date.
A claim which comprises matter infringing Art 123(2), i.e. which comprises features not directly and unambiguously derivable from the original disclosure can thus not have the priority or the filing date as effective date.
There is thus everything, rather than “nothing, in those provisions that prevents the EPO from establishing the relevant state of the art if a claim happens to infringe Article 123(2)”.
There is no “myth that unfortunately has taken root in the minds of a few EPO examiners”. The examiners are simply following the case law of the Enlarged Board and of the Technical Boards of Appeal which is very clear to them, but apparently not to you.
If there is an arrogance it stems from your side, not on the side of the examiners. By consider examiners as being arrogant, you merely project you own arrogance towards them. There is no doubt that examiners can take a wrong decision, and that is why there are the Boards of Appeal, to correct any wrong decision. But stating that all examiners arrogantly assume that their decision is correct is simply untrue and incorrect.
Talking about arrogance, I would like to remind you that people in glass houses should not throw stones. When pointing the finger at examiners you seem to forget that three fingers are pointing towards you!
It is your analysis which has created a myth, or better a fiction. Please give one decision of the Boards of Appeal in which the Board has decided to discuss novelty or inventive step after having considered that the claim infringes Art 123(2).
There are very few decisions in which the Boards of Appeal have considered that the objections on novelty and inventive step, on the basis of the available prior art under Art 54 and 89, are such important and deleterious to the subject-matter claimed, that the possible added matter can be ignored. But the other way there are none. There must be a good reason to do so.
It is for all those reasons that a division, be it an examining or opposition division, will never go further in order to determine whether a claim riddled with added subject-matter is actually new and inventive. And there is no arrogance in behaving in this way.
To be followed
Continuation
ReplyDeleteThere could be one big exception that is when the added subject-matter consists of an intermediate generalisation. In such a situation, with the intermediate generalisation removed, a division could well decide upon novelty and inventive step. On the other hand the EPO only decides upon requests which have been positively filed, cf. Art 113(2). Why should then a division take position a hypothetical request. There are also decisions of the Boards in which they took the stance that a division is under no obligation to do so.
Avoiding remittals is an aim worth to be pursued, but not at the price you claim. The applicant/proprietor will always have an arguable case, but should then divisions refrain from raising objections at all, with the risk of being considered arrogant?
The role of a division is to verify whether the claims it has to examine fulfil the requirements of the EPC, no more, no less. In doing this their role is to protect society from undue monopolies, and it is in this respect irrelevant whether the proprietor thinks or not that it has an arguable case.
I understand the position taken by UK courts, but this is, with due respect to the courts, no less than a fiction which is not supported by the EPC, whether you like it or not. This does however not mean that the way UK courts deal with such topics should be shared by other jurisdictions.
In this respect, the position of the German Federal Court is much more logical. In order to assess novelty and inventive step, they simply ignore the parts offending Art 123(2). The remaining part has then a well-established effective date. As very often added subject-matter is introduced in order to get away objections of novelty or inventive step, the end is easy to foresee.
The Enlarged Board has said a long time ago, cf. G 1/93, that the solutions provided in national courts are not applicable to the EPO. And it is therefore a disgrace to claim that examiners are arrogant when they apply Art 123(2). They might wrong, but this is something different.
If a patent is dead as dead can be, for any another reason, it looks at least pointless to me to decide whether the subject-matter claimed was new and inventive.
By the way, there is another case in which it is not possible to compare an invention with the prior art, that is in case the invention is not enabled. For the same token, it is useless in such a situation to decide upon novelty and inventive step. There might be prior art, but it cannot be compared with the invention as the invention cannot be enabled. Are examiners then also arrogant when they apply Art 83 in this way?
It might be a long reply, but the violence of the statement justifies a detailed response.
"A claim has for effective date either the priority or the filing date, or in other words the date of the youngest feature in the claim, see Art 54 and Art 89. This is the only point on which I can agree with you."
ReplyDeleteWe do not agree at all on your "in other words ..." insertion. The effective date for a claim is either the filing date of the application or the priority date, whether it complies with Article 123(2) EPC or not. This is clear from Articles 54 and 89.
"due to plain logic a claim infringing Art 123(2) cannot be at the same time new and inventive."
The EPC does not agree with you. According to Article 56 EPC, a claimed invention involves an inventive step if it is not obvious over the state of the art according to Article 54(2) EPC (read in combination with Article 89 EPC).
The requirement of Article 123(2) EPC is a separate one.
Your position seems to be that a claim that infringes Article 123(2) EPC cannot involve an inventive step. That would mean that a claim that infringes Article 123(2) EPC automatically infringes Article 56 EPC. That is a strange position to take.
"Please give one decision of the Boards of Appeal in which the Board has decided to discuss novelty or inventive step after having considered that the claim infringes Art 123(2)."
One example is T 488/02: claim 1 infringes Article 123(2), is new and is not inventive. Another example is T 1537/07.
I note that you were not able to cite any passage from the Guidelines or Case Law book that supports your position.
Please do not suggest that I am complaining about "all examiners". I complain about the very few examiners that share your very peculiar view, unsupported by Guidelines or case law. I don't know how many there are, but they tend to pop up in blog comments.
"The applicant/proprietor will always have an arguable case, but should then divisions refrain from raising objections at all, with the risk of being considered arrogant?"
That is not what I wrote.
My point is that the following is perfectly reasonable in a judgment by an English court as well as in a decision by an opposition division:
(1) decide that claim 1 contains added subject-matter
(2) (since the appeal court/board might disagree with the added-matter objection,) decide that claim 1 is not inventive. Or even that claim 1 is inventive, in which case the request clearly still has to be rejected because it infringes 123(2).
For an English court or for an opposition division of the EPO, there is no shame in acknowledging that reasonable minds may differ. That should not stop the court or the division from taking the decision it considers correct. It just means that it is neither shameful nor illogical to also take a decision on inventive step where that makes sense (= where the extra effort is outweighed by the advantage of possibly avoiding a remittal).
I suppose you have no problem with parallel clarity and added-matter objections. All I am saying is that a parallel objection on inventive step is no different. They are all separate objections. One objection is enough to reject the request, but it is fine to raise two or more objections against the same request or even decide that a request infringes one requirement but complies with certain other requirements. There is no obligation to do more than the minimum, but a division is free to use common sense.
"If a patent is dead as dead can be, for any another reason, it looks at least pointless to me to decide whether the subject-matter claimed was new and inventive."
Why would it be pointless? If there is an appeal and the board of appeal disagrees with that "another reason", a remittal has been avoided.
"By the way, there is another case in which it is not possible to compare an invention with the prior art, that is in case the invention is not enabled."
ReplyDeleteAlso here I do not agree. The claim "1. A composition that help against headaches" is too broad to be sufficiently disclosed and lacks novelty over aspirin.
It is also possible for a claim to a specific embodiment to be insufficiently disclosed (because the application and common general knowledge do not allow the skilled person to carry it out) and to lack novelty or inventive step over a document that does contain all the missing information.
So be careful with general statements about how substantive requirements of the EPC relate to each other.
I may be being overly simplistic. Is it not just a matter of which rules apply?
ReplyDeleteIn the event that an application is amended during prosecution it is Art 123(2), or I suppose Art 76(1) that apply.
This is of itself a ground of revocation or opposition as the case may be. If there is added matter, the patent or application is invalid. Loss of priority need not be decided (until the matter is rectified should that be necessary). If on the other hand there is no added matter, even if there were to be some link to priority entitlement (which I personally fail to see), then there is nothing to decide.
Loss of priority is a different question, which applies when a priority claiming application introduces new matter as compared to the priority founding case, or when there is a defect in the priority claim. This is not, of itself, a ground of revocation, but depends on the prior art which will become relevant if priority is lost. It is against that prior art which validity or otherwise must be judged.
I don't see that much is to be gained by muddying the waters.
I see examination reports from the EPO on a weekly basis that both find a claim contains added subject-matter and then assess the novelty and inventive step of that self-same claim. It is good procedural examination practice that reduces the number of examination reports required. This is because if you successfully overcome the Art 123(2) objection you can have already dealt with the inventive step objection in the same response, rather than requiring the Examiner to then issue an additional report on inventive step.
ReplyDeleteThe English court approach follows the same logic. They assess added subject-matter and inventive step separately so that if the Patentee successfully appeals on one issue the other issue is also dealt with at the appeal stage, rather than requiring a remittance back to the first instance.
In contrast, there is a real procedural issue with EPO Oppositions when a borderline decisions on added subject-matter are regularly issued without any subsequent assessment of novelty and inventive step. This means the Patentee has to appeal and, if successful, the opposition is simply remitted back to the Opposition Division for a further (appealable) decision on novelty and inventive step. As appeals can take 5 years or more, this piecemeal approach can mean the opposition process takes significantly longer than the remaining lifespan of a patent.
There is nothing legally incorrect in what you are saying about the assessment of novelty and inventive step on a claim with added subject-matter. But there is also nothing procedurally wrong in carrying out an assessment of novelty and inventive step of a claim on a conditional basis (i.e. on the basis that the decision on added subject-matter might subsequently be found to be wrong).
I'm both amused and shocked by the postings of "Explanation Please".
ReplyDeleteCourts (at least in England) perceive their role as a last resort in a dispute between A, a patent owner arguing infringement and B, a party seeking revocation of the patent and/or a declaration of non-infringement. They know that justice (the over-riding objective of civil litigation in the UK) demands swift revocation of bad patents and equally swift enforcement of patents not found bad. A and B demand nothing less. In the courts, in a real world dispute, with parties going out of business, there is no time for endless ping-pong betwewen the courts of the first instance and those of the second instance. Hence the decisions of the first instance take the issues in sequence, like at the EPO but, unlike at the EPO, they work their way through the issues, using wording equivalent to "But if I am wrong on Art 123(2) then I will go on to consider patentability over the art." That this could somehow be ultra vires is news to me.
The question arises, in a world where industry, stuck in a costly and time-wasting patent dispute, asks for "early certainty" why don't all first instance jurisdictions do it this way?
And as for the EPO, the best way I can think of, for Examiners to lose the sympathy of the outside world, is to reveal their ignorance of how business is done, and how patent disputes are resolved, in the real world outside the Ivory Towers in Munich and Den Haag.
Come now, Explanation Please. Explain yourself further please.
What is also amusing is the consideration of German practice regarding added subject matter to be logical. Before the Federal Patent Court, one of the grounds for revocation is the presence of added subject matter. Should such added subject matter however be identified, the patent is not revoked. Instead a conceptual bubble is drawn around the added subject matter and if the rest is novel and inventive, the patent can be maintained, bubble and all.
ReplyDeleteWhy did the legislators bother with including added subject matter as a ground for revocation in the first place?
Dear all,
ReplyDeleteThe two examples given by “Explanation given” are not as exemplary as he would like to see them. In both cases, the Board merely repeated the provisional opinion in its decision, as the applicant did not bother to reply and did not turn up at the scheduled oral proceeding. In T 1537/07, the lack of inventive step was due to non-technical features in the claim, and on top of it the board found a lack of clarity. Thus the Board had no choice to act differently if it wanted to close the case.
The two examples are thus to be taken with a rather large pinch of salt!
I would just agree that we all disagree and leave at that. I have not convinced you, what I accept, but you have not convinced me, what I hope you can accept as well. That British courts have a different view is for me not a problem as it is their right to do so. But I do not see that what British courts are doing is necessary a hallmark for the rest of Europe.
To be honest, what has been said by Kant makes me laugh. So in other words, a patent riddled with added subject-matter can be infringed. Nice to hear for the competitors.
By not revoking a patent riddled with added matter, the Court is thus giving to the patentee the undue advantage over competitors the Boards of appeal want absolutely to avoid by being strict on added subject-matter. And I agree with this stance.
All the promoters of the idea ignore added matter when dealing with novelty and inventive step were speaking for applicants/proprietors. I have not heard anybody representing an opponent agreeing with this.
From now on, silence will be my reply, unless I am provoked to reply.
Actually, in German courts (or in opposition proceedings at the DPMA) a patent will be revoked if there is added matter.
DeleteA patent will not be revoked, if the claim includes a feature that was not disclosed originally but is purely limiting (plus some more conditions).
In such a case novelty and obviousness will be decided on the claim WITHOUT the limiting feature, but for infringment the scope will be limited by this feature.
So, in such a case a better wording would be 'non-disclosed limitation' instead of 'added matter'.
Example: BGH X ZR 43/09 Integrationselement (the patent was declared invalid because of added matter nonetheless)
Re last comment from "Explanation please". Am I missing something here? Justice Arnold quite clearly concludes at para. 260(ii) that the patent is invalid for added matter. If the judgement is not appealed then an Order to revoke the patent will follow. If the judgment is appealed then the appellate court will have the benefit of a full consideration of the issues before the lower court. There may be a question whether it is efficient for the lower court to consider all matters when it need not necessly do so (in my view it's helpful to do so), but it is wrong to suggest that the court has in any way offended the EPC.
ReplyDeleteI did not say the court has offended the EPC. My point is that there is an inherent difficulty in deciding validity when at the same time a claim is riddled with added matter. The two are for me not going together. A claim which offends Art 123(2) does not have an effective date, and hence cannot be compared with prior art. If this is done nevertheless, it gives, as I said it before, a proprietor an undue advantage over its competitors.
ReplyDeleteThe idea of no effective date for claim offending Art 123(2) is not an invention of mine. When you look at the Examiner's report of the EQE, you will not find an assessment of novelty or inventive step for a claim or the variant of a claim offending Art 123(2).
See the second alternative(out of 3) in claim 1 of C2019, the second alternative of claim 5 of C 2018, claim 3/1 in C 2017, claim 2/1 in C 2016.
For claim 4b in C 2015, and for claim 2 in C 2014, the Examiner's report states expressis verbis that a claim infringing Art 123(2) has no effective date.
Do not tell me that the examiners of the EQE do not know what they are telling, as they have to check whether candidates are fit to practice, and hence should nknow how to handle problems occurring during prosecution, by respecting the case law of the Boards.
Do I have to say more. I do not think so.
Explanation please,
DeleteEffectively claiming that the EQEs, which are necessarily time-limited tests of knowledge, should be used as an example of "best practice" before the EPO and the courts is faintly ludicrous. They are there to provide a way of measuring if candidates are fit to practice - no more, no less.
As so many people have said above, the important thing here is that the courts can function efficiently to deliver justice to the parties. I am just repeating so many above in saying that to ignore the issues of novelty and inventive step on the premise that there is added subject-matter would just prolong the process if a higher court were to disagree about the added subject-matter.
To take this back to your example of Paper C, this is an opposition paper. When taking the paper you are required to formulate all possible attacks on a patent. If there is an added matter attack available, you are expected to use it. You are also expected to submit a lack of novelty or inventive step attack if this is available against the same claim. If you simply stated "there is added matter therefore I cannot attack novelty because there is no effective date from which to consider novelty", you would not get any marks.
Of course, where the added matter is so blatant as to be unarguable, you may not need to make further attacks, but real life is rarely so straightforward.
So how does one check for novelty with a claim that may contain added matter? You assume it does not include added matter and examine it with the effective it would have were this to be the case - i.e. either the filing date or, if the matter relied upon to provide support is in the priority document, the priority date. I cannot see how such an approach can be considered to be controversial.
There is no "inherent difficulty in deciding validity" if you simply determine what effective date the claim would have if your judgement on added matter is incorrect.
Considering your opinions infallible in matters of law that rely on personal interpretation is just asking for trouble.
No-body serious considers the EQEs to be a gold-standard of practice. Since they are time-limited exams they will necessarily not award points in Paper C for novelty/inventive step arguments against claims that are already dealt with as added matter, but this is not real life.
DeleteIn real life, added matter is included as an objection in probably the majority of oppositions, but the sensible attorney will also make arguments on novelty/inventive step and other grounds if these are viable. In real life only deciding that there is added matter, and not even considering novelty/inventive step in case your decision on added matter is incorrect, will simply waste time in the long run in the majority of cases.
One of the criticisms regularly levelled at both the PEB exams and the EQEs is that they ignore commercial realities. Typcially this is because they require you to do things that the client doesn't normally want. P6/FD4 is criticised for requiring integer-by-integer claim construction analysis that no sane client wants you to do, whilst Paper B requires you to cover-off points that no-one writing a response in real life would think worth the cost of responding to.
However, here we have an example of the exams requiring that you do not do something that the client actually typically wants - to make novelty/inventive step argument just in case your cleverly-drafted added matter arguments fail. Attorneys know that commercial reality demands this - it is only good when courts also realise this in making their decisions.
I realise that commenters are growing weary, but I would like to add just one short comment.
ReplyDeleteMany yeas ago, I was asking the TBA to reverse the OD and then remit the case to the OD to consider the issues under Art 54 and 56. The Board reversed, but declined to remit, with the following reasoning: We do not need to remit because from the OD's written Decision we already know its opinion on these issues. Think about that! Is that not behaviour (both by the OD and the Board) to be welcomed, commended?
Now, of course, there are cases that ought to be remitted, and cases where an unnecessary remittal adds years to pendency to a case. Seldom do both parties ask the EPO to go as fast as possible. Often one party wants speed, the other delay. Which party shall the EPO reward, and which one shall be punished?
And, of course, there are some cases where it makes little sense for the OD to address ALL issues in dispute in its written Decision. But, equally, there are cases where it is perverse for an OD to stop immediately after considering the first ground of attack on validity. The skill and wisdom lies in distinguishing the one type of case from the other, and then write the Decision that the equities in the case require.
A wise patent judge once said "We can learn a lot from the Americans. Watch carefully what they do. And then make sure not to repeat their mistakes". In the USA we see a sort of ongoing squabble between the Court of Appeal and the Supreme Court, on issues of patent validity, that has been going on for decades, and which demeans both courts. It would be regrettable if the EPO's Examiners and Boards of Appeal end up sniping at each other. Better that they should try hard to see the reasonable point of view of the other instance, and work together to retain flexibility, raise procedural efficiency, reduce pendency, and serve the over-riding objective of doing justice between the parties in dispute.
Anybody here disagree with any of that?