tag:blogger.com,1999:blog-5574479.post2254624545419540132..comments2024-03-29T13:59:42.629+00:00Comments on The IPKat: An improved Improver? - Part 2Verónica Rodríguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger34125tag:blogger.com,1999:blog-5574479.post-27054818875409788382017-07-28T20:50:58.356+01:002017-07-28T20:50:58.356+01:00Well, readers, I think that just about wraps up th...Well, readers, I think that just about wraps up the discussion here, don't you?MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-40650278474998195352017-07-28T14:39:15.455+01:002017-07-28T14:39:15.455+01:00Thanks MaxDrei
Here (the UK) the letter of the la...Thanks MaxDrei<br /><br />Here (the UK) the letter of the law is important, more so that it should be. Once a decision on a matter has issued, especially from a higher court the relevant profession falls into line. In the US, attorneys and the biotech industry is still vociferously complaining about the eligibility decisions and trying to lobby to reverse the situation. That would not have happened in the UK. The courts and the law are perceived as the authorities that know something no one else does, and so people accept the decision and start to think it and practice it. The lower Courts quickly bring it into everyday practice, i.e. it impacts a lot. Coming back to your point this will impact a lot on everyday practice, and those new Improver questions will be used frequently, and until we get much more guidance on how to use them there will be a lot of uncertainty. <br /><br />I agree words are always tricky and unclear, but a lot of the time we attorneys could essentially ignore purposive construction with the knowledge it was rarely central to determining scope. Now that has changed, and that is a big deal for the UK, in my opinion. Zeitgeistnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-84865434298553193852017-07-28T12:41:08.351+01:002017-07-28T12:41:08.351+01:00Well, Zeitgeist, if you live in England I must def...Well, Zeitgeist, if you live in England I must defer to you, to the extent that you know the fetid BREXIT landscape outside the South East of England better than I do. But I recall a "letter to the editor" which I read in my paper yesterday, about Brenda Hale and diversity amongst the judges. I copy its content below.<br /><br />And then there's that old saying, that those looking on see more of the game than the players themselves do.<br /><br />I agree that FTO opinions in chem/bio might need to be a tad more nuanced, from now on. But pemetrexed dipotassium was a pretty special case though, wasn't it. The overriding objective of doing justice necessitated stretching the scope to cover what less than perfect crafting of the patent application was lost as an undisclosed (!) intermediate Generalisation during prosecution at the EPO. It wasn't "proportionate" to strip the patent owner of all useful rights, as a punishment for a moment's inattention during the drafting of the application.<br /><br />These circumstances will be rare. And it is not as if FTO opinions hitherto were dead simple to write, under "purposive construction". Divining what the drafter was using the words of the to mean is tricky enough anyway, in particular whenever the claim uses a simple engineering claim like "slide","ratchet","shoulder" or "detent".<br /><br />PS. here that letter from the Reader: <br /><br />......at dinner with a group of barristers, I complained that they had all led a very cloistered life – boarding school, Oxford and then into chambers.<br /><br />“Not so!” said one. “I was a schoolteacher before I was a barrister.“ “Good!” said I, “Which school?”.<br /><br />“Eton” he replied.<br /><br />Oh well!<br />MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-89373466336515731982017-07-28T11:14:37.528+01:002017-07-28T11:14:37.528+01:00Thank you MaxDrei
My comment on the craziness of ...Thank you MaxDrei<br /><br />My comment on the craziness of this decision is from a UK perspective. Here we had basically killed off our doctrine of equivalents (purposive construction) and were well along the road of increased literalism and zero-tolerance to ambiguity that the EPO espouses. Our younger judges (at Court of Appeal level and below) would have fallen entirely into that way of thinking and we would have been doing that for eternity had this Supreme Court decision not totally changed the direction of how we interpret claims. This is a big change for the UK, and I can tell you our patent attorneys are feeling pretty bewildered! Many feel that infringement opinions will be close to impossible to write now.<br /><br />I referred to Brexit and Trump jokingly, but I do think that Brexit is giving some of the country a feeling that we now need to get back to independent thinking and not be so reliant on the EU and other International organisations to deal with the big problems. Trump being president means that decades of our foreign policy is up in the air, and the UK is requestioning what sort of country it wants to be and why. The Supreme Court may have had all this in the back of their minds when they decided to change how we interpret claims.<br /> Zeitgeistnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-32338128959790586002017-07-27T19:50:24.851+01:002017-07-27T19:50:24.851+01:00To Zeitgeist I say. Quatsch! This is the UK SC en...To Zeitgeist I say. Quatsch! This is the UK SC endeavouring to understand the civil law, mainland European mindset, and to align with it.<br /><br />Far from aligned with populist dumbed-down Trumpian rhetoric, it is the opposite of it.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-80156494211308754702017-07-27T14:44:40.336+01:002017-07-27T14:44:40.336+01:00It's important to bear in mind how crazy this ...It's important to bear in mind how crazy this decision is. The Supreme Court seems to have got into the spirit of 'disruptive innovation' (https://en.wikipedia.org/wiki/Disruptive_innovation), perhaps because they felt judges Birss and Arnold and others were having it too easy with existing case law. <br /><br />There are situation where volatility in law-making improve the system (http://scholar.harvard.edu/files/shleifer/files/evolution_jpe_final.pdf).<br /><br />It will be interesting to see if future historians link this decision to the general madness of Brexit, Trump and our recent UK election. The Supreme Court were merely caught up in the zeitgeist, perhaps Zeitgeistnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-64964916925512933832017-07-27T09:25:35.159+01:002017-07-27T09:25:35.159+01:00To Observer and Proof of the Pudding, even if the ...To Observer and Proof of the Pudding, even if the statement were deleted third parties would have been given an indication of what the applicant/patentee believes the 'equivalents' scope to be, and so in litigation the infringer is less likely to win the argument on 'uncertainty' for third parties.Johnnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-89154691155929134102017-07-27T08:36:01.994+01:002017-07-27T08:36:01.994+01:00John - an interesting suggestion, and one that I w...John - an interesting suggestion, and one that I would be curious to see put into practice. My experiences leads me to believe that any examiner who spotted such a statement and who appreciated its significance would either insist upon its deletion or instead upon expansion of the claims to encompass potassium salts (in addition to sodium salts). I guess we will only know if and when there is a relevant, real life example. As they say, the proof of the pudding will be in the eating.Proof of the puddinghttps://www.blogger.com/profile/14209291532431506713noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-79028156074215202912017-07-26T20:59:39.132+01:002017-07-26T20:59:39.132+01:00To John,
An application/patent cannot be specula...To John,<br /><br />An application/patent cannot be speculative, but commensurate with the contribution to the art. <br />Anything else would be contrary to the letter and the spirit of the patent system.<br /><br />It should therefore not come as a surprise that in the absence of any proof to it, the examiner will ask that such a statement is deleted. Such a prof might be given after the filing date, but cannot be added to the original disclosure. <br /><br />Ever heard of the acronym STIN on the front page of the patent? See Guidelines H-V, 2.3.Observernoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-61423243770679464912017-07-26T16:23:08.380+01:002017-07-26T16:23:08.380+01:00Thanks Proof of the Pudding, but that part of the ...Thanks Proof of the Pudding, but that part of the Guidelines refers to the literal scope. You would probably get away with something along the lines of:<br /><br />'The skilled person would understand that potassium is an equivalent of sodium and would give the same technical effect'.Johnnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-51140431876885603622017-07-26T09:01:45.908+01:002017-07-26T09:01:45.908+01:00John - that "solution" is not an option ...John - that "solution" is not an option for EP patents, I'm afraid. The EPO forces applicants to delete any passages in the description that cast doubt upon the scope of the claims. See, for example, the Guidelines at F.IV, 4.4 (https://www.epo.org/law-practice/legal-texts/html/guidelines/e/f_iv_4_4.htm).<br /><br />To me, this kind of suggests that the SC and the EPO do not fully agree on the interpretation of Article 69 EPC... but then what do I know?Proof of the puddinghttps://www.blogger.com/profile/14209291532431506713noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-24087390899942982262017-07-25T16:21:02.433+01:002017-07-25T16:21:02.433+01:00Dear Tim Jackson,
I fear that we will never agree...Dear Tim Jackson,<br /><br />I fear that we will never agree, so that I think we should agree that we disagree.<br /><br />It might certainly happen that examiners apply the golden standard in a mechanical way. This is not correct.<br /><br />The TBA have made clear that literal support is not required by the wording of Art 123(2) EPC, see for instance T 667/08 or T 2619/11. <br /><br />In T 1362/12, the BA specified that T 2619/11 did not lay down a different test, namely, of what was "really disclosed" to the skilled person. It also specified that decisions on Article 123(2) EPC are very case-specific and care should be taken in applying statements of Boards of Appeal made in the context of particular factual situations to other factual situations.<br /><br />We are thus far from a mechanical application of the grounds for added subject-matter, and the route taken by the TBA has one big advantage, it offers certainty to third parties, which is certainly not the case of the decision of the SC. <br /><br />As far as Art 54(3) is concerned, one way to avoid the objection, is to include an undisclosed disclaimer, cf. G1/03. G 1/16 to come, should clarify the relationship between undisclosed disclaimers <br />(G 1/03) or disclaimers relating to an embodiment of the invention <br />(G 2/10). <br /><br />Another way to avoid an objection to Art 54(3) is to add a technical feature, whereby this feature may indeed be trivial. In my opinion, it just has to be technical, but has to be disclosed directly and unambiguously in the original application, and here no equivalents thought of by the applicant/proprietor should come into play. <br /><br />In my opinion, the decision of the SC is by no way applicable in order to overcome an objection under Art 54(3). If this would be the case, then uncertainty would be even greater. <br />Observernoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-56896136500343298262017-07-25T14:56:19.446+01:002017-07-25T14:56:19.446+01:00I think when drafting a case it might be wise now ...I think when drafting a case it might be wise now to define 'equivalents' in the description. Presumably nothing in the EPC or UK Patents Act prohibits such subject matter being present in the description and it might help to influence determination of equivalents during infringement proceedings. A court might be more minded to accept these predefined equivalents and there would have been less uncertainty for third parties which is one of the tests for how equivalents are assessed.Johnnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-73344808849624885022017-07-25T11:53:32.261+01:002017-07-25T11:53:32.261+01:00@Digny - No idea. My guess would be that the assig...@Digny - No idea. My guess would be that the assignee is buying the rights that the assignor has, and therefore is bound by what the assignor said during prosecution (which delimits the bounds of what the assignee is buying). No doubt better qualified people will be able to give you a better answer.Gilman Grundyhttps://www.blogger.com/profile/06607416440240634159noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-66521353290862785932017-07-25T09:00:23.135+01:002017-07-25T09:00:23.135+01:00What the Supreme Court is really doing is rebalanc...What the Supreme Court is really doing is rebalancing how we determine the protection an invention deserves by focusing on what the invention is rather than the words of the claim. That has its problems but also its merits, not least because it reflects natural justice. The system has become too legalistic and literalist, where deception and cleverness with words have become too prominent. Parents must be about inventions, and we need to keep working at how best to make protection commensurate with the invention and nothing else.Alephnullnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-32791564397951973522017-07-24T18:19:38.560+01:002017-07-24T18:19:38.560+01:00Gilman Grundy, wonder what would happen if the cas...Gilman Grundy, wonder what would happen if the case was assigned and the patentee going to court was different to the applicant. Are they allowed to distance themselves from the previous arguments in prosecution if they disagree with them?Dignynoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-5464395947332174682017-07-24T13:38:57.329+01:002017-07-24T13:38:57.329+01:00@John - "Now that we do have a doctrine of eq...@John - "Now that we do have a doctrine of equivalents and a limited file wrapper estoppel doctrine the UK courts may want to also look to the US where the Festo decision quite nicely thought about the interaction between the two, i.e. where a claim has been amended it cannot have doctrine of equivalents."<br /><br />1) Obviously in this particular case the claims were amended due to a support issue (i.e.,they lacked support for the claim-scope that Lilly eventually succeeded in gaining by arguing equivalence), but I guess this isn't what you mean.<br /><br />2) The ruling does state that an example of where the prosecution history might be of use is where the applicant has stated that something is not included in the claim scope.Gilman Grundynoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-82657236395937507452017-07-24T12:38:47.735+01:002017-07-24T12:38:47.735+01:00In view of US anon's comment:
A doctrine of e...In view of US anon's comment:<br /><br />A doctrine of equivalents must mean that patentee behaviour becomes relevant to claim scope. If they explicitly 'disclaim' scope in their in validity arguments during examination then surely a Court cannot ignore that when deciding on the scope for infringement. That must mean equitable considerations apply, and the extent to which the patentee is forced to use contradictory arguments in the court case.<br /><br />I don't know of any UK case law about equitable issues that would give guidance as to what UK Courts will actually do in this situation Greeknoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-70812731062325762602017-07-23T14:23:58.924+01:002017-07-23T14:23:58.924+01:00Way above (at post 1), John said:
"Presumabl...Way above (at post 1), John said:<br /><br />"<i>Presumably doctrine of equivalents is also going to have to be responsive to 'equitable' considerations in judgements</i>"<br /><br />Which does make me wonder. Here in the US (under a proper understanding of the limits of equity when it comes to statutory law), I do not think that such a presumption would be in play.<br /><br />I am curious from those that understand both systems, how would such a difference play out between the sovereigns?THE US anonnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-37508897045030070562017-07-23T14:16:47.090+01:002017-07-23T14:16:47.090+01:00Tim,
You state: "Perhaps you accept the usua...Tim,<br /><br />You state: "<i>Perhaps you accept the usual EPO line as the only correct one, but is it? Perhaps the gold standard should be applied after a more realistic examination of what is directly and unambiguously disclosed, giving the skilled person more credit for his or her knowledge, skill and intelligence?</i>"<br /><br />I will not pretend that I am most up to date with the "EPO line" on what constitutes the power of a Person Having Ordinary Skill In The Art ("PHOSITA"), but your comment DOES reflect a point that I have made on US blogs concerning the US version of that "juristic person." <br /><br />To wit: our Supreme Court (in its usual manner of seeking to be anti-patent), in the <i>KSR</i> decision actually did the opposite - if it were to be consistent with its jurisprudence (albeit, consistency is <b>never</b> a given for that cloistered group).<br /><br />By this I mean that by the Court attempting to raise up the power of PHOSITA in order to "allow" 103 to be more powerful in blocking patents, they also - concomitantly - raised up the power of PHOSITA when it comes to understanding what may pass as equivalents.<br /><br />It is to that very same (in the US version) PHOSITA that has been augmented as to being far more powerful that THAT power now is unleashed in "understanding" what is "directly and unambiguously disclosed."<br /><br />Sometimes a blade <i>will</i> cut both ways....THE US anonnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-78547898438514345092017-07-23T10:31:28.655+01:002017-07-23T10:31:28.655+01:00The dictionary definition from "anonymous&quo...The dictionary definition from "anonymous" serves to confirm me in my self-confidence, that "diffidence" was the right word to use, to describe the Applicant's choice not to press on the ED a claim to the intermediate Generalisation pemetrexed.<br /><br />By their actions shall ye know them, somebody once told us.<br /><br />By the Applicant's actions here, in this way, I do know that it lacked self-confidence to press a pemetrexed claim on the ED, indeed that it shied away from even attempting it.<br /><br />Applicant simply made the rational (and stink normal) assessment, that to assay a claim amendment before the ED, and fail, will leave you in a worse position after grant than if you had not tried. <br /><br />That's one reason why, round the world, informal oral interviews with the responsible Examiner are so highly valued. To its credit, the EPO knows this and therefore seldom obliges. MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-42231743756828991592017-07-22T16:38:17.747+01:002017-07-22T16:38:17.747+01:00dif·fi·dence
ˈdifidəns/
noun
modesty or shyness re...dif·fi·dence<br />ˈdifidəns/<br />noun<br />modesty or shyness resulting from a lack of self-confidence.<br /><br />Not only do you presume to know the applicant's emotional state, you presume to read into the record a causality not supported by facts of the record.<br /><br />Unless you personally know of the applicant's state of self-confidence, modesty or shyness, then your suppositions merely reflect an injection of an emotional buzzword, that is simply not founded in any objective observation.<br /><br />That's my guess.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-53839984809712698792017-07-22T16:13:13.536+01:002017-07-22T16:13:13.536+01:00we might find in 10 years that the uncertainty was...we might find in 10 years that the uncertainty was great in forcing parties to talk to each other, and that led to more settlements and collaborations. One never knows what is best in the long term, and I don't think we have the best nowAlephnullnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-68512920494500140302017-07-22T15:38:09.994+01:002017-07-22T15:38:09.994+01:00Dear Observer
By definition, equivalents are neve...Dear Observer<br /><br />By definition, equivalents are never going to be the same as the literal claim.<br /><br />As to the disclosure, in paragraph 89 the court seems to have had a different view to the EPO examiner about what was directly and unambiguously disclosed to the skilled person. They didn't explain why, but they had received rather more evidence than the examiner about the level of skill in this art. Maybe we can speculate that they therefore thought the disclosure would say more to a real-life skilled person than it did to the examiner.<br /><br />Certainly the examiner was following the usual EPO line when deciding what was directly and unambiguously disclosed to the skilled person. Perhaps you accept the usual EPO line as the only correct one, but is it? Perhaps the gold standard should be applied after a more realistic examination of what is directly and unambiguously disclosed, giving the skilled person more credit for his or her knowledge, skill and intelligence?<br /><br />And if that more realistic examination is not feasible with the limited evidence and resources available during normal examination proceedings, or even in the Boards of Appeal, perhaps the applicant should be given more benefit of the doubt, rather than just facing a brick wall.<br /><br />It's a balance between, on the one hand, having some bad patents granted which may be knocked out subsequently, when the courts receive fuller evidence of the level of skill; and on the other hand having patents for meritorious inventions unduly limited so they are easy to get round and commercially worthless. I accept that there's no easy answer to achieving that balance, and it needs more debate. But I'm not convinced that the EPO and the Boards of Appeal are currently achieving it.<br /><br />In the meantime, there is the doctrine of equivalents.<br /><br />For the avoidance of doubt, I'm not saying the "directly and unambiguously disclosed" gold standard is necessarily wrong, but I do think we need to question and debate the mechanical way it is applied, with insufficient attention to the real knowledge and skill of a real skilled person.<br /><br />And yes, I do appreciate that the same level would be applied to novelty as well as to added matter. Given that usually an inventive step is also needed, that would really only affect Article 54(3) prior art. Here is not the time or place, but one day there may be scope for a corresponding debate as to whether it should be possible to overcome 54(3) prior art by including a feature which to a skilled person is only trivially different.<br />Tim Jacksonnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-806610994654986482017-07-22T13:57:54.944+01:002017-07-22T13:57:54.944+01:00Dear Max Drei,
My apologies, I must have overlook...Dear Max Drei,<br /><br />My apologies, I must have overlooked something, and I am pleased to see that we agree on the golden standard.<br /><br />Dear Tim Jackson,<br /><br />I agree to the point that the court has decided what it has decided, but I maintain that what the court has decided is not what is directly and unambiguously disclosed in the application as filed. The equivalents are not part of the original disclosure.<br /><br />The applicant proprietor has obtained protection for something that he has not disclosed at the filing date of his application, as he has limited himself to permetrexed disodium, whilst he would have been easy for him to show during prosecution that his specific teaching could be generalised. It was reasoned decision of his not to do so.<br /><br />The uncertainty created by this decision is nothing which can be seen positively for the patent system, and I am by far not the only one who thinks so. <br /><br />Ever heard about Pyrrhus' victory?Observernoreply@blogger.com