tag:blogger.com,1999:blog-5574479.post2785352191069643765..comments2024-03-28T16:45:51.051+00:00Comments on The IPKat: An eminent analysis of G 3/14 [Examination of clarity in opposition]Verónica RodrÃguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger8125tag:blogger.com,1999:blog-5574479.post-58548015383615408432015-04-02T21:50:06.860+01:002015-04-02T21:50:06.860+01:00Anonymous writes:
"It has always been of pot...Anonymous writes:<br /><br />"It has always been of potential advantage to include vague features into claims."<br /><br />That may be. But now we have G3/14 and its observation that such vagueness can hurt you.<br /><br />Remember Mario Franzosi's Angora cat? Puffed up, huge and threatening in Duesseldorf (where you need a wide claim to enjoin the infringer), tiny and pitiful in Munich, where the Federal Patents Court considers validity. Well, with G3/14 the biter is bit. The greater the egregious ambiguity, the more likely it will be, that your Baldrick-like devious and cunning dependent claim gets construed extra-widely in Munich too, when its patentability over the art is under review. And it's too late by then to clarify it, or amend it with text out of the description.<br /><br />But perhaps I'm still seeing it wrong. Any more thoughts, anonymous?<br /><br />MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-39569136013262815082015-04-02T19:46:05.447+01:002015-04-02T19:46:05.447+01:00I have had the pleasure of being across the table ...I have had the pleasure of being across the table from DXT in both oppositions and examination proceedings. When he retired he showed me his extensive notes on the EPC and the body of case law that has built up around it - similar to these presentation slides. He really should make these available to those who would be willing to pay, which would be many from the profession, I'm sure. Ross Poldark's torsonoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-29069377408734868782015-04-02T17:19:26.139+01:002015-04-02T17:19:26.139+01:00@MaxDrei:
Nice unintended consequences, I think. W...@MaxDrei:<br /><i>Nice unintended consequences, I think. What I mean is, by excluding Art 84 as a ground of attack on validity, we encourage draftetrs and prosecutors to minimise ambiguity, to police themselves, and thereby deliver clearer patents than we would otherwise have.</i><br /><br />Why would that be the consequence? It seems more likely that prosecutors are now encouraged to include as much vagueness in the (in)dependent claims as they can get past the examining division. That vagueness won't be a hinder in opposition proceedings and could possibly be of help in future infringement proceedings if the judge can be convinced of a particular meaning (a meaning still to be determined, in dependence on any prior art that might be cited and the properties of the allegedly infringing product).<br /><br />But I don't think G 3/14 is really problematic because of this. It has always been of potential advantage to include vague features into claims. That is why there is Art. 84 in the first place: it is up to the EPO to ensure that granted patents are clear. (It seems to me that MaxDrei's reasoning would lead to the conclusion that scratching Art. 84 completely would somehow encourage applicants even more to draft clear claims.)<br /><br />Since only a fraction of granted patents get opposed, the right time to enforce clarity is during the grant proceedings. G 3/14 might have the positive effect that it encourages the EPO to actually examine clarity of dependent claims. If the EBA had followed the president's opinion, the expected next step would be an amendment of the Guidelines making clear that examiners need not insist on clarity of the dependent claims. This is not an option now.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-70828744353001123342015-04-02T12:43:15.674+01:002015-04-02T12:43:15.674+01:00Consequence: the pilot who should have been able t...Consequence: the pilot who should have been able to have been helped with his sickness crashes a plane into a mountain killing what, 184 people?<br /><br />MaxDrei, I don't know which is worse, your choice of metaphor, or your lack of understanding as to why your choices are perpetually off the rails.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-22487298653665987712015-04-02T10:28:44.004+01:002015-04-02T10:28:44.004+01:00What I like in the Decision is the brusque advice ...What I like in the Decision is the brusque advice to all those Amici who endlessly werret on about the imperative of perfect clarity that they must "live with" less than perfect clarity.<br /><br />As Daniel Thomas points out, as Bosch points out above, it is in the self-interest of Applicants and their advisers to police their own clarity, prior to issue.<br /><br />Compare the USA, where patent litigators endlessly counsel drafters deliberately to obfuscate and be ambiguous, so that later, in litigation, they can play both sides against the middle. Do we in Europe want to go down that path? No thanks! Does G3/14 help us to steer clear of such a path? yes it does!<br /><br />Nice unintended consequences, I think. What I mean is, by excluding Art 84 as a ground of attack on validity, we encourage draftetrs and prosecutors to minimise ambiguity, to police themselves, and thereby deliver clearer patents than we would otherwise have.<br /><br />Sort of like pilots' licences. Take them away, the moment the pilot reports sick. Consequence: no pilot ever reports sick!MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-80961592891576083602015-04-02T09:29:14.122+01:002015-04-02T09:29:14.122+01:00It's true that it affirms conventional practic...It's true that it affirms conventional practice as in T 301/87, but additionally it disapproved T 472/88 which the Boards had followed for 25 years, where the concept of a lack of clarity "arising out of" an amendment was given a broad construction based on the OED definition, i.e. "originate, be born, result from, come into notice, present itself". This has had the effect over the years of drawing into clarity examination many granted claim features which the Enlarged Board's new test would exclude. David Brophyhttps://www.blogger.com/profile/03756548361266218916noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-54101587428813510422015-04-02T09:19:10.464+01:002015-04-02T09:19:10.464+01:00Even though it seems as it is just an affirmation ...Even though it seems as it is just an affirmation of the standard practice, it is not a lot of fuss about nothing. Numerous parties such as epi, FICPI, CIPA, AIPLA and the President have written amicus curiae briefs over this matter, while defending different opinions. I believe this G decision is a fundamental decision on what opposition proceedings should be about.<br /><br />said Iron MaidAnonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-38150579071585705772015-04-02T08:41:19.937+01:002015-04-02T08:41:19.937+01:00Am I the only one who sees this G decision as a lo...Am I the only one who sees this G decision as a lot of fuss about nothing? A case of "as you were"?<br /><br />If the new claim is not clear it simply gives the wily opponent the opportunity to construe the meaning in a manner which hopefully reads onto a suitable prior art document.<br /><br />Wrote H. BoschAnonymousnoreply@blogger.com